On June 17, 2019, Canada implemented the Madrid Protocol. The Madrid Protocol provides trademark owners with an opportunity to file a single trademark application for international registration with the World Intellectual Property Organization (the “WIPO”). Trademark owners can designate members of the Madrid Protocol (e.g. countries) where protection is sought. As of October 31, 2019, the Madrid Protocol has 106 members covering 122 countries. A complete list of the members of the Madrid Protocol can be found here.
How it works
The Madrid Protocol process can be separated into three main steps: filing a national application, filing the international application, and substantive examination by national or regional offices.
Step 1: Filing the National Application
Before you can file your international application, you need to have already filed or registered an application in your home IP office. For Canadian applicants, your home IP office will likely be the Canadian Intellectual Property Office (the “CIPO”). This registration or application is known as the “basic mark”. For Canadian applicants, if you already have a Canadian trademark registration, you can proceed directly to step 2.
While it is not required to wait until your basic mark is registered before proceeding to step 2, it may be beneficial to wait for registration before proceeding to step 2. Waiting for registration may allow you to fix any issues arising during prosecution of the basic mark which could complicate steps 2 or 3.
Step 2: Filing the International Application
The second step is to prepare and file your international application. Upon filing your international application, your home IP office (e.g. the CIPO) conducts a preliminary examination to ensure that the international application is for a mark that is identical to the basic mark and that the goods and services of the international application are not broader than those of the basic mark.
Once certified by the CIPO, your international application is sent to the WIPO to check for discrepancies, errors, or mistakes. Once approved by the WIPO, your mark is recorded on the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in each of the territories where you wish to have your mark protected. However, it is important to understand that the actual scope of protection of your international registration is not determined until Step 3.
Step 3: Substantive Examination by National or Regional Offices
At step 3, each IP Office where you wish to have your mark protected will conduct its own substantive examination of your trademark. Substantive examination occurs according to the legislation of each designated member and may include evaluating the international application by conducting searches for identical or potentially confusing trademarks, and assessing other potential obstacles to registration.
The IP Offices of the members where you want to protect your mark will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. If an IP Office refuses to protect your mark, either totally or partially, this decision will not affect the decisions of other IP Offices. You can dispute a refusal decision directly with the IP Office concerned. If an IP Office accepts to protect your mark, it will issue a statement of grant of protection. WIPO will record the decisions of the IP Offices in the International Register and then notify you.
Why use the Madrid Protocol
As compared to separately applying to register your trademark in foreign countries through individual national applications, the streamlined process of the Madrid Protocol is designed to reduce your filing costs.
Another advantage over individual national applications is that administrative matters subsequent to registration (e.g. name changes, address changes, ownership changes, renewals, etc.) can usually be processed in a single procedural step, with effect across all designated Madrid Protocol members. This simplifies the management of trademark portfolios and can result in significant cost savings subsequent to filing.
For some countries, the Madrid Protocol may effectively cause registrations to be obtained more quickly than through national applications due to the strict time limits imposed under the Madrid Protocol.
Potential Pitfalls of the Madrid Protocol
It is possible for a trademark owner to lose its rights granted by an international registration if the basic mark application does not mature to registration or if the basic mark registration is canceled during its first five years. A corresponding loss of rights in foreign countries can be avoided by timely converting the foreign member country designations into individual national applications. Such conversions would, however, outweigh any cost savings achieved by initially filing under the Madrid Protocol.
Another disadvantage of the Madrid Protocol relates to the available breadth of the applied-for goods and services in your home IP office. For example, the CIPO requires relatively narrow descriptions of goods and services in trademark applications as compared to some other countries. As such, you may be able to secure broader protection by filing directly in those countries without being limited by the strict rules of Canada.
While most countries are members of the Madrid Protocol, there are still about 75 countries that are not. Therefore, since an international registration can only cover Madrid Protocol member countries, separate national applications are still required for non-member countries.
The Madrid Protocol can provide an efficient and cost-effective alternative to obtaining foreign trademark protection through individual national applications. However, careful consideration of the above-discussed potential pitfalls should be given in each case. We invite you to contact us with any questions about the Madrid Protocol, either generally or with respect to specific cases that we are handling on your behalf.