Canada: International Brand Protection For Canadian Companies: Using The Madrid Protocol To Expand Trademark Rights Abroad

Last Updated: June 26 2019
Article by Cynthia Rowden and François Larose

As of June 17, 2019, Canadian businesses will be able to access a centralized trademark filing system known as the Madrid Protocol to expand their brand protection internationally. This can offer significant cost savings and administrative efficiency in registration of trademarks in the member countries of the Madrid system. The following sets out basic information on when, how and where the Madrid Protocol can help to broaden the international scope of trademark protection.

What is the Madrid Protocol?

The Madrid Protocol is an international treaty, based on the original Madrid Agreement of 1891 that permits companies in member countries to extend trademark protection from their home countries to other member states by using a centralized filing system administered by the International Bureau (“IB”) of the World Intellectual Property Office (“WIPO”). Using the Protocol can permit applicants to save the costs of hiring local trademark counsel to prepare and file applications in member countries, which in some cases can be considerable. The IB also handles renewals, assignments, changes of name, etc. for all international registrations, meaning that those changes can be requested centrally, and not on a country-by-country basis, again resulting in cost savings. Canada will formally become a member on June 17th, permitting Canadian businesses to take advantage of these cost savings and efficiencies in international brand protection, and allowing applicants from other member countries to file in Canada through the IB.

What countries are members of the Madrid Protocol?

The Madrid system (which covers the original Madrid Agreement and the updated Madrid Protocol) can only be used by businesses in member countries. Currently, there are 104 members, covering 120 countries (the European Union is a member, as are most of the individual European countries). Generally, the members include European countries, the Russian Federation, the United States, Mexico, China, Japan, South Korea, Australia and New Zealand, whereas most of Africa and South America are not members. A full list is located here.

How do you use the Madrid system?

Applicants from member countries must first have a home country trademark application or registration (the “basic” application/registration). Accordingly, for Canadian businesses, a Canadian trademark application or registration is a prerequisite. An application for an “international registration” can then be filed with the Canadian Trademarks Office for the same mark, goods, services and classes designating specific countries who are members of the Madrid Union. The Canadian Trademark Office will certify the accuracy of information, and then formally present it to the IB. Applicants must forward the required fees directly to the IB, in Swiss francs (the Canadian Office will not handle the required fees). The IB, in turn, reviews and confirms that all necessary information has been received, and if not, will advise the Canadian Office of any deficiencies, which must be addressed within a short timeframe. Once all formalities and fees are complete, the IB issues an international registration, and forwards the Protocol application to the national trademark office of each designated country, where the applications are generally treated the same as all national applications, and are subject to examination and/or opposition and may be registered or refused. If registered, or the time to notify the IB of a refusal has expired, the IB will record an extension of rights to that country on the particulars of the international registration.

What is the impact of an international registration?

When first issued by the IB, the international registration is, in effect, notice of the applicant’s intent to extend rights to designated member states – the owner does not yet have any enforceable “international” rights to speak of. However, once national offices register the Protocol application and inform the IB of the extension of rights, the international registration acts as a record of the bundle of national rights, and all subsequent renewals, assignments, mergers, changes of name or address can be managed centrally through the IB – who will forward pertinent requests to the designated national offices. Applicants may also file multiple requests for designations – all treated the same way. There is a single renewal date (the 10th anniversary of the date the originating Trademarks Office submitted the international application to the IB), which applies regardless of the calculation of national renewal terms. The essence of the Madrid system is centralized filing and record-keeping, but not harmonization of national registration procedures.

What are the costs?

The prerequisite to use of the Madrid Protocol is ownership of a home-country application or registration, so all applicants must start with that. The fees for the application for an international registration (or a subsequent designation of rights) are calculated in Swiss francs (“SF”) and payable in advance to WIPO, based on a combination of the “basic fee” (653 SF), which applies to all applications, supplemented by extra costs for colour claims (250 SF), and by the total number of classes of goods and services (100 SF per class over 3 classes), plus fees based on the country, which is either a standard “complementary fee” of 100 SF, or individual fees by country, plus their add-ons for colour and/or extra classes. Most countries have elected individual fees. By way of example, the added fees to designate the United Kingdom are 252 SF plus 63 SF per extra class, whereas the United States is 291 SF per class. Some countries are very expensive (eg. Bahrain seems to have the highest costs at 1710 SF, whereas others are a relative bargain – setting either the 100 SF complementary fee (eg. Russia), or Gambia, where the fee is 97 SF. Generally, because of the initial “basic fee”, most experts suggest that use of the Protocol filing system makes sense when there are more than 3 countries involved.

The above costs cover filing ONLY. They do not include costs relating to local examination and completion requirements. Those will be handled on a country-by-country basis, and in most cases, will involve the hiring of local trademark counsel to prepare and file the necessary response.

What are the advantages of using the Madrid Protocol to expand foreign trademark rights? 

The main advantage is cost savings available from a centralized approach to filing, recording assignments, mergers, and renewals, as well as fee payment (based on the number of countries designated) – all possible without having to retain local trademark counsel in the designated countries. Complicated local requirements for powers of attorney, legalization and notarization at filing can be avoided (although these could be required during examination). Record-keeping is simplified, since there is a single “registration” to renew, namely the international registration, and a single renewal deadline. Translation costs may be avoided since the applicant may select one of three possible languages (English, French or Spanish) for all communications. 

Are there any disadvantages to use of the Madrid Protocol? 

Users of the system commonly identify a number of issues, starting with “dependency”, namely that international rights are dependent on the validity of the original home country, or basic application/registration for a period of five years after the date of the international registration. Should the basic application be refused, or the registration cancelled during this five year term, all international rights also cease. The Protocol (unlike the original Madrid Agreement) permits trademark owners to transform their international rights to individual national rights as long as requests are submitted in a timely fashion, according to national laws. However, there can be costs, inconvenience and potential limitation of rights as a result. 

Second, international registration rights cannot be any broader than the home country mark. Canada has particularly strict requirements for goods and services descriptions, and those details will form the basis of limitations to any country extensions under the Protocol. For example, while some countries may permit descriptions such as “clothing”, or “pharmaceuticals”, the Canadian Trademarks Office requires more specificity, and those details must be included in all country designations originating from a Canadian application or registration.

Third, any rights in an international registration may be assigned only to a company in a country that is also a member of the Protocol. Particularly for companies with broad international rights, using the Protocol, only, to acquire foreign trademark rights may prevent easy assignment of those rights. Another restriction is that amendments to registrations are limited – even if local country laws permit amendments to marks or descriptions of goods and services.

Less tangible, but equally important, by not using local trademark counsel, applicants may lose the benefit of important information or tips about local restrictions or risks to use. In addition, filing is of course no substitute for searching in advance of use or filing. Brand owners need to assess if, and when, such searching should be done. Both local country designations and use can expose companies to risk of challenge, and local advice might help to avoid examination or opposition obstacles. 

Is the Madrid Protocol system better suited to use for some marks?

In short, yes. Those with experience in using the Madrid Protocol caution that it is not suited for non-traditional marks, marks that are likely to encounter difficult examination issues or oppositions in the home country (due to the dependency issue), or marks that may not be accepted internationally, such as slogans, numbers and letters. It is also less advantageous for global brands, especially given the restriction on assignment of an international registration to companies within the Madrid Protocol. It seems to work best for long-used marks that are not likely to encounter objections based on prior rights and subsidiary brands where the impact of cancellation of rights due to dependency might not be as severe.

Are there some countries that are better for Protocol Applications than others?

There are many local differences that may make some countries better candidates for Protocol filings, or at least require applicants to be aware of important local differences. For example, the timing of examination can differ wildly amongst member countries, making it administratively difficult to ensure a timely response. In China, it is not uncommon to receive objections that require a response in 2 – 3 weeks, which can be complicated given the timing to receive the objections (from the China national office to the IB and then to the Protocol applicant/agent), and retain local counsel to file the necessary reply. China is also one of a few countries that require Protocol registrants to obtain a Supplemental Certificate confirming registration rights, which may slow down enforcement proceedings. Some countries, such as Japan and Cuba have a two-step fee system, with rights being lost if the second fee is not payable on time. Some countries assign both international registration and local application numbers to separate classes within applications. The United States requires applicants to sign a supplementary declaration of intent to use, and also requires a statement of use in the sixth year of registration. These many local differences reinforce that the Madrid Protocol is a centralized filing system, and there is no guarantee of similar national treatment of the applications.

An international registration is not really an international registration

There is no such thing as a registration that covers the entire world, thus making use of the words “international registration” in the context of the Madrid Protocol somewhat misleading. The Protocol is instead a system for filing and maintaining national rights in member countries. It is one of many tools available to brand owners to gain rights abroad in more cost-effective ways. For example, filing a Community Trademark in Europe offers rights that cover the current European Union in a single registration. The most efficient way to expand brand protection internationally is to do so strategically – using a combination of national rights, regional rights like the Community Trademark, and the Protocol to reduce local filing costs, along with prudent expert advice designed to limit local challenges to both use and registration. The place to start is at home, with national trademark rights – with those, brand owner options increase, and brand protection and enforcement can be easier. 

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions