Tips When Using the Madrid Protocol to Register a Trademark in Canada

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December 08, 2020

The Madrid Protocol (the “Protocol”) is an international agreement that facilitates trademark protection within member countries. Under the Protocol, a trademark owner who has registered, or filed an application to register, a trademark in its home jurisdiction can file an application for international registration of the trademark with the World Intellectual Property Organization and designate member countries where it seeks protection for its mark. Each member country will then apply its own rules and laws in determining whether or not it will protect a trademark in its jurisdiction. The Protocol can, in many circumstances, simplify and reduce the cost of obtaining registrations in multiple countries and can simplify the process of renewing or assigning a registration.

Membership in the Protocol has grown rapidly in recent years with more than 100 countries now being members. Canada joined the Protocol effective June 17, 2019. The purpose of this article is to provide guidance for international applicants using the Protocol to register their trademarks in Canada.

Some Statistics

Since June 17, 2019, Canada has been designated in more than 28,000 Protocol applications. Applicants based in the United States, the European Union, and the United Kingdom have been the biggest users of the Protocol to enter Canada.

During the same time period, the Canadian Intellectual Property Office (“CIPO”) has certified over 760 applications for international registration. The top three jurisdictions that have been designated by applicants have been the United States, the European Union, and Australia.

Canadian Agent

If a WIPO representative was included in the designation notification but does not appear on the CIPO list of trademark agents (or does not have a Canadian address), CIPO will issue a courtesy letter to the effect that further correspondence regarding the Protocol application will be directly with the applicant or its appointed Canadian agent.

For this reason, foreign agents may wish to appoint a Canadian agent early on in the process to ensure that all correspondence from CIPO comes to their attention rather than being sent directly to the applicant.

Timing

When it signed on to the Protocol, Canada made accession declarations under Articles 5(2)(b) and (c) of the Protocol.  Its accession to Article 5(2)(b) extended the deadline by which it must send a total provisional refusal of an application to the International Bureau (“IB”) from 12 months to 18 months. 

Its accession to Article 5(2)(c) allows CIPO to send a provisional refusal after the 18-month time limit based on an opposition if it, among other things, notified the IB before 18 months of the possibility that an opposition may be filed to the application after the 18-month time limit.

Given that Canada signed on to the Protocol effective June 17, 2019, this 18-month deadline is close to being reached for applications that were filed on or shortly after that date. It is uncertain whether CIPO will be able, at least in the short term, to meet this deadline. Many applicants report having received notifications from CIPO under Rule 16 of the Protocol Regulations to the effect that oppositions may be filed against their application.

It appears that these notifications should not be taken as an indication that CIPO necessarily considers that an opposition to a particular application is likely to be filed. Rather, the purpose of the notification is to allow CIPO additional time to examine applications beyond the standard 18-month limit.

Goods and Services Objections

As reported in our recent article on the subject (see https://cpstip.com/requirements-for-describing-goods-and-services.html), CIPO strictly applies its requirement that the goods and services in an application be described in specific and ordinary commercial terms.  CIPO’s requirements mandate a level of specificity for goods and services that goes beyond what is required under the Nice Classification system.

Depending on the context, an applicant may be required to include details such as the function, area of use, field of use, etc. of goods/services.  Goods described as “accessories”, “equipment”, “apparatus”, “systems” or “products” are generally not considered acceptable without further specification. CIPO also has particular requirements for certain goods and services such as software, pharmaceutical products, services related to the transmission of data and telecommunication-related services.

Distinctiveness

As discussed in our recent article on the subject (see https://cpstip.com/trademark-distinctiveness.html), CIPO now examines applications to determine if an applied-for trademark is distinctive. In its Trademarks Examination Manual, CIPO has provided a non-exhaustive list of categories of trademarks that it considers to be not inherently distinctive:

• names of geographic locations
• names of colours and colours applied to the surface of a three-dimensional object, if the associated goods are commonly in this colour
• one and two-letter or number trademarks and phone numbers
• surnames
• clearly descriptive words
• words and phrases that are laudatory or provide generic information

In responding to a non-distinctiveness objection, an applicant would need to show that the trademark does possess at least some inherent distinctiveness or submit sufficient evidence to establish that the mark, through use, had acquired distinctiveness in Canada as of the filing date of the application.

Official Marks

A foreign applicant for trademark protection in Canada may be surprised to see a citation in an Examiner’s report of a third-party “official mark”. As discussed in our recent article on the subject (see https://cpstip.com/official-marks.html), Canada’s Trademarks Act provides protection for the official marks of public authorities. This protection allows a public authority (i.e., an authority that is subject to a significant degree of ongoing control by a government in Canada and whose activities benefit the public) to ask CIPO to publish notice of the authority’s adoption and use of a mark as an official mark for goods or services. Upon the publication of such notice, no third party may adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, such official mark.

A trademark applicant, in responding to a citation of an official mark, has certain options. For example, it can argue that its mark is sufficiently different in appearance from the cited official mark so as not to be likely to be mistaken for it. Alternatively, the applicant can argue that the public authority no longer exists or it can seek the consent of the public authority to the applicant’s use and registration of its trademark. Lastly, the applicant can seek to challenge the official mark through judicial review proceedings brought in the Federal Court. 

Our Services

CPST Intellectual Property is available to act as your agent for Madrid Protocol applications in Canada and to provide you with advice regarding how best to respond to objections raised by a CIPO Examiner. Please contact any of our trademark professionals to inquire as to our services.

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