Canada Joins the Madrid Protocol

For decades, Canada remained a holdout to the international trade-mark registration system known informally as the Madrid Protocol. The Madrid Protocol has been in operation since 1996. The United States acceded to the Madrid Protocol in 2003, Mexico acceded in 2012. For twenty-two years, Canada deliberated about whether to accede. Every few years, members of the Canadian trademark bar would announce that the deliberations were drawing to a close. Yet Canada remained a non-member. Now, Canada has at last formally acceded to the Madrid Protocol, joining 102 other member countries around the globe.

Canada’s accession to the Madrid Protocol is one stage in a wide-ranging plan to modernize the country’s intellectual property regime. The country is already a member of key copyright treaties such as the Berne Convention for the Protection of Literary and Artistic Works. In 2018, Canada acceded to the Hague Agreement Concerning the International Registration of Industrial Designs. [1]  In late 2019, the country plans to accede to the Patent Law Treaty.[2]  But trademarks are the form of intellectual property at the top of Canada’s to-do list in 2019.

In addition to accession to the Madrid Protocol, Canada has ratified the Nice Agreement, a streamlined classification system for describing the goods and services claimed under trademark applications.[3]  Canada has also acceded to the Singapore Treaty, which is intended to make trademark application more user-friendly and harmonizes the administrative procedures used to process trademark applications. [4]  Canada has modified its trademarks legislative framework and its Intellectual Property Office practices to comply with the Protocol, Agreement, and Treaty. This modernized framework will come into force on June 17, 2019.

Canada’s accession to the Madrid Protocol is a welcome development. Foreign trademark owners previously had no choice but to file national applications, “from the ground up,” at the Canadian Intellectual Property Office. As a result, foreign trademark applicants would often file a Madrid Protocol application in every country in which they sought protection except Canada, which required a separate, national filing.

Now, foreign applicants can use one form, make one transaction, and pay one fee to file a single application requesting protection in countries such as Afghanistan, Mongolia, and Canada. In addition, foreign trademark owners who hold a Madrid Protocol registration but decided to forego a national application in Canada may now have the option to file a “subsequent designation” for Canada. Through such a filing, they may be able to supplement their original Madrid Protocol registration with a new designation for Canada.

Canada’s accession is designed to reduce both administrative burdens and filing costs for foreign applicants who seek protection in Canada.[5]  The country’s modernized intellectual property system is particularly beneficial for those in neighboring countries like the United States. It is also a favorable development for foreign companies who do business in Canada. With Canada’s accession to the Madrid Protocol, many foreign trademark owners will no longer have to navigate a broad divide between their home country’s trademark laws and those in force in Canada.

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Posted in: Intellectual Property - Trademarks