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The Madrid Protocol for the International Registration of Trademarks – Is your brand ready?

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June 4, 2018

I recently returned from Seattle, where I attended the annual meeting of the International Trademark Association (INTA). This event attracted nearly 11,000 brand owners and their service providers from all over the world. Among such a large international gathering, attendees were able to discuss many issues of interest in the trademarks field.

One question that regularly came up was: When will Canada finally become part of Madrid?

No, this does not mean that our country is considering joining forces with sunny Spain in a geopolitical sense. Rather, the question was directed at Canada’s adherence to the Madrid Protocol, which is an international trademark registration system.

The Madrid Protocol allows for the filing of a single trademark application which can eventually mature to registration in many different countries which are members of the Protocol. (At present, over 90 countries are members.) The alternative is to file individual applications in each country in which trademark protection is sought.

Canada has, in fact, already committed to joining the Madrid Protocol, and legislative changes in this regard were first tabled in 2014. Now, the Canadian government is working on updates to the Trademarks Regulations (and IT updates) in order to actually implement the new system. It is anticipated that full implementation will occur in the Spring of 2019.

Canada’s adherence to the Madrid Protocol means that Canadian applicants will be able to file a single trademark application to obtain registrations for that trademark in foreign member countries of interest. Similarly, foreign applicants in member countries will be able to designate Canada as a country in which they wish to obtain a trademark registration through Madrid.

In certain cases, filing a single international application through the Madrid Protocol can be more efficient and cost-effective than filing individual applications in each country of interest. It is important to note, however, that in order to take advantage of Madrid, an applicant must first have a pending application or issued registration in its home country. Therefore, Canadian entities that are considering filing international applications once the Madrid Protocol is implemented in Canada are well advised to ensure that trademark applications for their key brands have been filed in Canada.

For further information on how to get your brand ready for Madrid, please contact Stephanie Chong at schong@hofferadler.com.