Canada's accession to the Madrid Protocol on June 17 will allow Canadian businesses to protect their trademarks abroad. Below is a summary overview of the Madrid Protocol, its benefits, and the changes to be expected in Canadian trademark law.
What is the Madrid Protocol?
Bringing together more than 119 countries across the world, the Madrid Protocol offers a simplified and centralized platform for its member states to register trademarks and obtain international protection. In fact, if you plan to do business in several countries, all you have to do is file an application for international registration, based on your Canadian trademark application, at the International Bureau ofWorld Intellectual Property Organization (PMOI). An application for trademark registration could therefore be filed in any country that is a member of the Protocol.
The benefits of Canada joining the Madrid Protocol
If you do business internationally, protecting your brands can be long and expensive, especially because the procedure is carried out separately in each country, in different languages and with taxes (more or less expensive) to be paid in different currencies. The Madrid Protocol will make your life easier in a number of ways, in particular:
- Simplicity of the registration application: a single application for registration, or an “international application” based on your Canadian application, in a single language (French, English or Spanish), in a single currency and at a single office (WIPO) is sufficient for your trademark to be registered in the member countries of your choice.
- Reduced costs: by filing a single application, you will avoid, in particular, the costs of translating documents, conversion into various foreign currencies and the fees of local professionals.
- Simplified process in the event of a change in trademark registration: if a change in trademark registration occurs, including a change of address or an assignment, you only need to notify WIPO and these changes will automatically be applied to all your trademarks in each country.
- Market diversification: currently, the majority of Canadian trademark applications filed abroad are concentrated in the United States. From now on, the simplification of the procedure with the possibility of making an international application will facilitate the entry of Canadian businesses into various foreign markets.
The “bad” aspects of the Madrid Protocol
There are some things that are worth bringing to your attention in relation to international registrations, including:
- Dependence on registration applications: the registration of an international trademark will remain “dependent” on the basic registration application (in Canada) for a period of five years from the filing of your international application. Therefore, in the event that your request for basic registration is for example rejected or your registration cancelled, the corresponding international registration will suffer the same fate. It will therefore be necessary to wait five years before obtaining the independence of your international registration.
- Limitation on trademark transfer: although a significant number of countries are part of the Madrid Protocol, it should be noted that an international registration cannot be transferred to an entity that does not have an establishment in one of the member countries of the Protocol.
A few practical tips
- Identify your company's trademarks, i.e. the names of the products and/or services you offer as well as your various target markets;
- Register names identified as trademarks in the targeted countries/regions as soon as possible, ideally before the start of use, in order to obtain priority rights;
- Be sure to take the necessary steps to monitor trademark registers and oppose trademark applications that may cause confusion with your trademarks.
Finally, Canada's accession to the Madrid Protocol will not only provide numerous benefits for Canadian businesses, by allowing greater openness to various foreign markets, but will also attract foreign businesses to the Canadian market.
If you have any questions about Canada's accession to the Madrid Protocol or in the area of trademarks in general, do not hesitate to contact us:
