Canada’s trademark law is changing, and these changes will be coming into force on June 17, 2019. The sweeping changes which the new law will usher in are the most significant since the 1950’s. We therefore thought it was appropriate to take a deep dive into the new legislation, to briefly outline the main areas of change, and how trademark owners will be impacted.
The Madrid Protocol system offers a centralized filing system with significant cost advantages. The Madrid Protocol is administered by the World Intellectual Property Office (WIPO). Half of all global applications are filed through the Madrid system. Canadian companies will now be able to obtain an international registration extending to any of the over 90 member countries that are part of the Madrid Protocol. One trademark application can be filed in one language in a single office with one set of fees. Protection can then be extended to any of the designated countries. The resulting application will issue to a single registration (called an IR) which can then be renewed with one set of renewal fees, and it will also be possible to file a single application to record any change in ownership or address in multiple countries. An international registration will have the same effect as a registration obtained in each of the contracting parties designated by the applicant. There are therefore important cost savings when filing or managing international trademark portfolios.
If the process starts in Canada, it requires a basic application or a basic registration owned by an entity with a connection to Canada. The application can claim Convention priority if it is filed within six months of the Canadian application, and the Canadian application is the first filed application.
The international applicant requests an extension of protection (EOP) to its chosen countries. The application is examined for formalities by WIPO, which can issue a notice of irregularity. Any member country can then issue a provisional refusal within 18 months. If there is no final refusal, a grant of protection will be provided and an international registration (IR) issues. The IR is treated like a bundle of national registrations. The term of the IR is 10 years.
There are three types of fees in the Madrid process. The first is the basic fee, there is then a supplementary fee for each class greater than three, and finally a complementary fee, which is the filing fee for each country which is designated.
A disadvantage of the Madrid system is that the Madrid registration will be completely dependent on the Canadian basic application or registration during the first five years of the Canadian-based registration. If the goods or services included in the Canadian basic application or registration are narrowed during the first five years of the term of the Canadian basic registration, the international application or registration must also be limited. The major disadvantage of a Madrid registration is the notion of “central attack”. If the basic application is withdrawn/refused/cancelled in the first five years after the issuance of the IR, all of the dependent applications and registrations will also fail, unless they are transformed into national filings, which can be very costly.
The Canadian Intellectual Property Office will have two roles within the Madrid Protocol system; first as an office of origin for Madrid applications filed by Canadian applicants, and secondly as a receiving office for Madrid applications designating Canada.
As the office of origin, CIPO’s role will be to certify the international application, and the Office will also keep track of the basic mark over a five-year period and will forward all official forms on behalf of the trademark holder. The Madrid e-filing service will be accessible on CIPO’s website, and all fees are payable to WIPO in Swiss francs.
As a designated contracting party, its role will be in the field of substantial examination of applications coming into Canada from other Madrid Protocol countries where Canada has been designated, and in that role CIPO will issue a decision of refusal or no refusal.
Canadian applications coming from the Madrid system will still be examined, approved and published, and the normal opposition periods will apply. CIPO will deal with foreign applicants directly, but any agent must be a Canadian agent.
Accordingly, companies wishing to take advantage of the Madrid Protocol system must make sure that all of their important trademarks are registered, so that they can form the basis to support an international application. Secondly, it will be very important to have a trademark watch service in place for key trademarks so that conflicting trademark applications coming from other countries into Canada can be opposed.