The Government of the Hong Kong SAR has announced that it is proceeding with plans to adopt the Protocol Relating to the Madrid Agreement, the international trade mark registration system, following its consultation at the end of 2014. Meanwhile, the Canadian Intellectual Property Office (CIPO) is putting the final touches on draft regulations necessary to allow Canadian applicants to use the system.

It is anticipated the Madrid Protocol will be available in Hong Kong in 2019 at the earliest. However, some modifications to the system will be required. Since Hong Kong is an administrative region of the People’s Republic of China and not a sovereign state or qualified inter-governmental organisation, it cannot become a contracting party.

It is proposed that Hong Kong will communicate directly with the International Bureau and not be required to go via the Beijing office of origin. The language of communication and filing will be English and so if the base application is filed in Chinese (permissible in Hong Kong), it must also be translated into English.

International registrations based on applications filed in member countries other than China (both Mainland China and Hong Kong SAR), will be able to designate Hong Kong SAR and/or Mainland China. International registrations based on applications filed in Hong Kong SAR will not be permitted to designate Mainland China. Conversely, international registrations based on applications filed in Mainland China will not be able to designate Hong Kong SAR. In order to fill this gap, the Government of the Hong Kong SAR will seek a reciprocal filing arrangement between the Hong Kong SAR and Mainland China. However, this arrangement is yet to be agreed with Mainland China and discussions are progressing slowly.

Canada began its consideration of participation in the Madrid system as early as 1997. With only minor consultation in the period since, it came as a surprise to many when in 2014 CIPO ushered legislative changes through Parliament overhauling the Canadian trademark system. Canada’s long reliance on foreign or domestic claims to trade mark use as the basis for granting trade mark rights will come to an end shortly when the revised regulations and associated official procedures come into force. This is expected in early 2019.

CIPO supported a trade mark system markedly different from that of the US, Canada’s largest trading partner sharing essentially a common market with common-law based trade mark laws. Law and practice within the two countries may now be expected to diverge.

While the need to make Madrid filings available in Canada was widely accepted, the manner which CIPO chose to do so has been criticized by many parties. It is widely anticipated that the new laws will make search, clearance and enforcement more complex. The draft regulations will be made available for public comment shortly.