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Hola Bienvenido! Canada adopts the Madrid Protocol to enhance international brand protection for Canadian brand owners

Jun 27, 2019

Profile Image: Sepideh Nassabi - Trademark Agent and Litigation LawyerSweeping amendments to the Canadian trademark regime came into force on June 17, 2019.  As part of those amendments, Canada became a member of the Madrid Protocol, which allows Canadians to extend trademark protection outside of Canada by using a centralized filing system administered by the International Bureau of the World Intellectual Property Office. 

How does it work?

You first need to have filed a trademark application or have a trademark registration in Canada.  Once you have that, you can then apply with the Canadian Trademarks Office for an international registration for another country that is also a member of the Madrid Protocol, including the US, China, and Mexico. 

This centralized approach has its pros and cons.

The main advantage to this centralized approach is cost savings. Canadians are now able to file trademark applications internationally without having to retain local trademark counsel in each jurisdiction for those international applications.

There are disadvantages to using this centralized approach. For one, the international application is dependent on the Canadian application/registration. If your Canadian application/registration is refused, then your international application will be refused as well.

I know I mentioned above that the centralized system is cost-effective because you do not need to retain local counsel for international applications. However, there is a risk here. If, for example, you use the centralized approach for a US trademark application and that application is challenged, a US trademark lawyer would be best suited to deal with that challenge.  

This centralized system might not work for companies with global brands. This is because any rights in an international registration may be assigned only to a company in a country that is a member of the Madrid Protocol. Right now, there are 104 members of the Protocol, which covers 120 countries. Just by way of example, Chile, Costa Rica, and Taiwan are not members of the Protocol. If you have a global brand, you need to be strategic. Maybe the best option is to apply nationally or use a combination of national filings and the centralized system. 

The good news for you is that you don’t need to make these decision on your own.  We are here to help. Contact Sepideh Nassabi for questions about your trademark and registering it in Canada or abroad at snassabi@mindengross.com.

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