Don’t Miss Notices from the Canadian Intellectual Property Office regarding Madrid Protocol Trademark Applications

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Wondering why you haven’t received any updates on the progress of your client’s Madrid Protocol application designating Canada?  After reading that question, are you wondering what on earth a Madrid Protocol application is?

Let’s take a step back.  The Madrid system is a mechanism that facilitates the registration of trademarks in multiple jurisdictions around the world.  One way to file trademark applications in multiple jurisdictions is to engage local counsel in each jurisdiction of interest and work with counsel to file individual applications.  By using the Madrid system, however, a trademark owner can file a single international trademark application with the World Intellectual Property Organization (WIPO), and designate one or more jurisdictions based on just this one application.

As you might imagine, the primary benefits of the Madrid system are convenience and potential cost savings.  For example, a trademark owner may file an international application with the help of just one attorney instead of engaging multiple law firms worldwide.  (Of course, there are some drawbacks to this system – but that’s a topic for another post!)

Canada joined the Madrid system in June 2019.  The same day Canada joined, the Canadian Intellectual Property Office (CIPO) established rules for how CIPO would contact trademark owners, trademark owners’ non-Canadian legal representatives, and WIPO regarding the status of a Madrid application designating Canada.

The main takeaway from these rules?  Even though it might seem contrary to the spirit of the Madrid system, it’s a good idea to appoint a Canadian trademark agent as soon as possible for a Canadian application filed under the Madrid Protocol, in an effort to avoid missing important deadlines and notices.

Here’s what you need to know about these CIPO rules:

  • I’m the applicant of a Madrid application designating Canada, and I have not appointed a Canadian trademark agent.  What type of communications will I receive regarding my application?

    CIPO will send all communications directly to the applicant, unless a Canadian agent is appointed.

  • I’m the US (or non-Canadian) counsel for the applicant of a Madrid application designating Canada.  My contact information appears in the Madrid application, but we have not appointed a Canadian trademark agent.  What type of communications will I receive regarding my client’s application?

    Foreign representatives will only receive a courtesy letter indicating that all future correspondence will be sent directly to the applicant or to an appointed Canadian agent.

  • Will WIPO receive all the communications that CIPO is sending to the applicant or Canadian agent?

    No. Only certain communications may be available via WIPO’s database, such as a first Office action received. Other critical communications, including subsequent Office actions, may not be sent to WIPO.

  • Can I access the communications that CIPO is sending to the applicant or Canadian agent via CIPO’s database?

    Not at this time.

  • What happens when I appoint a Canadian agent for my Madrid application designating Canada?

    CIPO should start sending all communications to the Canadian agent, and should stop sending correspondence to the applicant.

Thanks to Elizabeth Sterling, from Marks & Clerk Canada, for her assistance with this post!

This entry was posted in Brand Management, Brand Protection, Branding, Foreign, Madrid, Prosecution Outside USA, Trademark Portfolio Management, Trademark Prosecution.
Date Published: December 19, 2019
Kelly M. Horein is an associate on the Trademarks team of the firm’s Intellectual Property Practice Group. Kelly’s practice encompasses all aspects of brand management, including domestic and international trademark clearance, registration, and enforcement. When litigation is necessary, Kelly assists clients with disputes, including trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and trademark litigation in federal court. In addition, Kelly prepares and negotiates intellectual property agreements, counsels businesses on website development and social media issues, and assists them with assessing product packaging for compliance.