Canada joins the Madrid Protocol for International Trade Mark Registration

Canada has become the 104th territory to join the Madrid Protocol for International Trade Mark Registration.

The World Intellectual Property Organisation (WIPO) and Canadian government jointly announced Canada’s accession to the Protocol with effect from 17 June 2019.

What is the Madrid Protocol?

The Madrid Protocol is an international treaty that governs the registration of trade marks. The Madrid Protocol covers over 100 member states and regions including Australia, New Zealand and the European Union.

The Protocol is administered by the World Intellectual Property Organisation (WIPO), which is based in Geneva Switzerland.

What is the benefit of the Madrid Protocol?

Trade mark applicants from member countries can use the Madrid Protocol to apply for trade marks in overseas countries and territories.

A key benefit of the Madrid Protocol is that it allows applications to be filed to multiple jurisdictions simultaneously, instead of having to apply separately in each jurisdiction. In addition, renewals and other administration can be processed via WIPO for all international trade marks stemming from a Madrid Protocol International Registration.

A Madrid Protocol application must be based upon a trade mark application or registration in the applicant’s home jurisdiction (known as a “Basic Application” or “Basic Registration”).

What are the Key Changes?

Access to Madrid Protocol route for filing

Prior to Canada’s accession to the Protocol, it was necessary to engage a local attorney to file a direct application in Canada.

From the commencement of effect in Canada, foreign applicants will be able to apply for trade mark registration in Canada under the Madrid Protocol. This will mean the convenience of lodging a single application from the applicant's home country, although it may still be necessary to engage a Canadian attorney in some circumstances.

Similarly, Canadian trade mark applicants will now have more convenient access to overseas trade mark registrations via the Madrid Protocol.

Nice Classification

Canada has also adopted the Nice Classification System, which divides trade mark goods and services into an array of 45 classes.

Previously, Canadian applications were divided only into goods (also known as “wares”) and services and a per-application fee was payable. Canada has gradually transitioned to the use of Nice Classification numbers, although prior to Canada’s entrance into the Madrid Protocol, the Nice classifications have not been legally binding on Canadian trade marks.

Fees

With the adoption of the Nice system, Canada has introduced per-class application fees.

On 21 May 2019, Canada announced its fees for new applications, subsequent designations and renewals under the Madrid Protocol as follows:

• New Applications and Subsequent Designations:
  251CHF (Swiss Francs) for the first class
  76CHF for each additional class
• Renewals:
  304CHF for the first class
  95CHF for each additional class

Term of Registration

Another critical change will be to the term of registration. Canadian law currently provides for 15-year registrations, whereas the Madrid Protocol stipulates an effective term of registration of only 10 years.

What next?

Existing trade mark holders and applicants in Canada should review their trade marks and be aware of potential changes as Canada moves into the Madrid system.

From commencement, applicants for new trade marks will have the choice of applying for registration in Canada directly, or under the Madrid Protocol.

Existing Madrid Protocol International Registration holders will be able to consider applying for protection in Canada via a Subsequent Designation.