By: Sepideh Nassabi (Partner) - Trademark and Intellectual Property Group

Have you applied for a registration of a trademark in Canada? Or, do you have a certificate of registration for a trademark in Canada?  You can now file for trademark protection in other jurisdictions from inside Canada.

Canada has adopted the Madrid Protocol, which allows you to apply to register your trademark in 129 countries by filing a single international application.

What are the advantages of using this procedure? I’m glad you asked.  Below are the top 6 advantages:

1. One Application - Less Paperwork: Rather than having to file a trademark application in each foreign jurisdiction, you can file one international application seeking protection throughout the member countries of the Madrid Protocol. 
2. One Language: You can file your international application for multiple countries in one language.
3. Lower Fees: You pay a single set of fees to request registration of your trademark. Also, you don’t need to retain local counsel in each foreign jurisdiction to file the application for you. I can do all of that from right here, in Toronto.
4. Scope: The Madrid Union currently has 113 members covering 129 countries.  This means that you can file one single application covering any number of these member parties to the Madrid Union.  
5. Logistics: It is easier to manage your international trademark portfolio because any changes to your application will be made in all the registers of the foreign jurisdictions.
6. Timeliness: The granting or refusal of the international registration must be done within 2 years from the date of filing the international application. Depending on the jurisdiction, under the current system, we’ve seen wait times longer than 4!

If you have questions or want to register a trademark under the Madrid Protocol, have a question or concern regarding your trademark or intellectual property, or have an infringement of your intellectual property rights, please contact Sepideh Nassabi, lawyer and registered trademark agent, at snassabi@mindengross.com.