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Attention Foreign Trademark Counsel (and Applicants): Appoint a Canadian Trademark Agent for Madrid Applications to Prevent Loss of Rights

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October 31, 2019

As reported in an earlier blog post, Canada implemented the Madrid Protocol on June 17, 2019. The Madrid Protocol is a system which permits entities located in member countries to obtain “international” trademark registrations. Once the initial international application is filed with the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, the application is then sent to each individual designated country for further processing in accordance with national laws. The Madrid Protocol allows for both outbound and inbound applications. This means that an entity based in Canada can now file a trademark application under the Madrid Protocol and designate multiple countries of interest in which that mark is desired to be protected. Conversely, foreign-based applicants can designate Canada as a country in which protection of an internationally applied-for mark is being sought.

These incoming applications in which Canada is designated will be processed by the Canadian Intellectual Property Office (CIPO) after the original international application is filed with WIPO. Foreign applicants should be aware, however, that CIPO has adopted a practice whereby not all correspondence pertaining to the application will be sent to WIPO.  This means that foreign trademark counsel who are handling the original WIPO filing will NOT be sent copies of all correspondence pertaining to the Canadian application.

CIPO will, however, correspond directly with the applicant (not their foreign counsel), OR with a registered Canadian trademark agent. An initial courtesy letter is sent by CIPO in this regard, after which it is prudent for the foreign applicant to appoint a registered Canadian agent to ensure that no correspondence is missed.

Therefore, as a matter of best practice, a trademark applicant (or their counsel) that is based outside of Canada and that has filed an application with WIPO designating Canada as a party in a Madrid application should also appoint a registered Canadian trademark agent to assist with the processing of that application at CIPO. This will minimize the chances of any relevant deadlines being missed, and will help the applicant keep abreast of the progress of the application at CIPO.

The registered Canadian trademark agents at Hoffer Adler are also lawyers who can advise on all aspects of the trademark application process, as well as strategic considerations, including optimizing the scope of trademark protection and enforcement. Please contact us for further information.