Trademarks in Canada and the Madrid Protocol

By Randy Marusyk, April 30th, 2015

The Madrid Protocol is a trademark treaty that has established a system for the international registration of trademarks, having 92 member countries including the United States and the European Union. It makes it possible to file national trademark applications in one language, and also to simultaneously renew and record assignments or address changes for registrations in multiple jurisdictions. This filing procedure may potentially provide significant cost savings for an applicant who would like to file a global trademark.

Canada has begun implementation of the Madrid Protocol when Bill C-31, the Economic Action Plan 2014, No. 1, which recently received Royal Assent. Although this legislation has been passed, the Trade-mark Regulations will need to be revised and proclaimed into force before the Madrid Protocol becomes law in Canada; it is expected this will happen in late 2015 or early 2016. Other practical implementations such as staff training, IT system updates, and clarification of the Canadian Intellectual Property Office’s (CIPO) role as an ‘Office of Origin’ may affect this timing.

There have been some concerns expressed as to the implementation of the Madrid Protocol in Canada. Practically, it will further burden an over-burdened system which may result in an increase of the prosecution timeline for domestic applications, in order to meet the strict time limits imposed by the protocol. The Courts may also need to adjust to higher volumes of litigation while looking for legal guidance in other jurisdictions. There are also concerns about the overly broad legislative amendments including the removal of trademark ‘use’ requirements at the time of registration. Such a change in the Canadian legislation may result in trademark squatting, that is, the registering of trademarks solely for the purpose of selling them.

For more information about this topic please contact:

Randy Marusyk, Partner 
T: 613.801.1088
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

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