Canada adopts the Madrid Protocol

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Canada’s Trade marks Act comes into force on June 17, 2019, bringing changes to the treatment of domestic applications by the Canadian Intellectual Property Office (CIPO), and implementing Canada’s accession to the Madrid Protocol, the Singapore Treaty and the Nice Agreement.

The country deposited its Instrument of Accession on March 17, 2019, and will bring to 104 the number of members of the Madrid system.

The Madrid Agreement and Madrid Protocol provide a means of obtaining an international trade mark registration through a single filing procedure. By adopting the Madrid Protocol, Canadians can now file trade mark applications at the World Intellectual Property Organization (WIPO).

Before the adoption, Canadian individuals and businesses looking to protect their brands and trade marks in other countries were required to file trade mark applications in each separate country of interest and pay multiple sets of application and processing fees, an administrative challenge for companies which need to protect its brands in many countries.

However, once the amendments to the 2014 Trade marks Act come into effect, then starting from June 17 trade mark applicants in Canada will have the ability to file an application seeking to obtain protection for their marks and trade marks in several counties by filing a single Madrid protocol application and paying one set of fees to WIPO. This will simplify procedure and will greatly benefit Canadian businesses interested in protecting their brands and trade marks abroad.

The Madrid System.

The Madrid Agreement, based at WIPO in Geneva, provides a centrally administered system for obtaining a bundle of national trade marks. So far, not all the countries who are party to the Madrid Agreement have signed up to the more recent Madrid Protocol, but it is expected that all previous members will also ratify the Madrid Protocol.
Currently, the Madrid System has 103 members, covering 119 countries.
The Madrid Agreement and Madrid Protocol provide a means of obtaining an international trade mark registration through a single filing procedure.

In making an international application, the individual countries where protection is required are designated. The cost of the application depends on the number of states included. All applications are based on a home registration or an application in a country belonging to the Madrid Protocol. For the first 5 years of an international registration, it is tied to the home registration or application on which it is based. As a result, if this ceases to exist, the international registration ceases to exist.
The Madrid system supports multi-class mark applications, and a successful application results in a bundle of national registrations, valid initially for 10 years from the application date. The bundle of registrations requires only a single renewal at the WIPO before expiry of this 10 year period.
Acceptance of the mark in each member state is dependent on the prior rights in each state, and generally there is an opposition procedure which third party holders of existing rights can invoke, but if no opposition is filed, then the mark is accepted in the individual national state.

For more information, please contact your usual Patent or Trade Marks Attorney for an informal discussion or call us on 0161 820 2891.