International trademarks? From Canada to Madrid and back


In June 2019, Canada’s trademark laws were amended and it became possible for Canadian nationals, residents and businesses to access the international trademark registration system commonly known as the Madrid Protocol.

Under the Madrid Protocol, a trademark owner first files a regular Canadian trademark application.  An availability search is recommended prior to that since a subsequent international registration is dependent on the Canadian application for five years from the date of the international registration. The owner then files an international application with the World Intellectual Property Organization (WIPO) through the Canadian trademark office, designating the other countries or regions (such as the European Union) in which the owner desires a registration.  A simple, direct hit search is recommended for each country being designated – perhaps a different mark would be suitable in certain countries.

WIPO examines the application to ensure it is complete, publishes the trademark registration, and notifies the designated trademark authorities in each of the countries and regions designated by the owner.  So far so good.

Each designated country’s trademark office then gets into the act, examining the application to see if it meets that country’s particular requirements.  Under the Madrid Protocol, these national offices have deadlines by which they must advise WIPO as to whether the application has been granted or refused in their respective jurisdictions.  If rejected, the trademark owner generally must hire local trademark agents to assist in responding to the objections raised.

The same rules apply when foreign brand owners in other countries that participate in the Madrid Protocol wish to designate Canada.  After the Canadian trademark office is notified of the designation, an examiner is assigned and the application is then dealt with under Canadian trademark law and procedures.  We are often retained to assist owners and their counsel to overcome objections raised by the Canadian examiners.

A stated advantage of the Madrid Protocol is to allow trademarks to be registered internationally, which should allow for a smoother, less costly process than filing separately in each country or region of interest to the owner.  Also, additional designations can be added on to the international registration as business expands globally. As noted above, that advantage can evaporate when each designated country’s trademark office applies local laws during the examination of the application.  As such, sometimes it makes sense to file applications directly in the countries of greatest interest to the trademark owner. An informal rule of thumb is to file applications individually if you are seeking protection in five or fewer countries, or as an international application if protection is sought in more than five countries.