With growing access to foreign markets, it’s no surprise that more Canadian businesses are looking to protect their trademarks abroad. In 2014, adopting an international trademark registration system was a distant and abstract concept. Now, following a series of changes to Canadian trademark laws, the Madrid Protocol is closer than ever to being implemented.
With increased access to foreign trademark protection on the horizon for Canadian businesses, what is the Madrid Protocol and how will it affect your business?
An International One-Stop Shop
The concept of the Madrid Protocol is simple: a business from a member nation can file one application and pay one set of fees to protect and manage a trademark in one or more of the 98 member nations through a centralized system overseen by WIPO.
Take for example a business in the United States that wants to expand its reach into the Singaporean market. The business has two marks: one is registered and the other is in the early stages of the U.S. trademark application process. Both of these can be submitted through the U.S. trademark office to the World Intellectual Property Office (WIPO).
WIPO reviews, approves, and records both applications. The U.S. business receives a certificate of the international registration for both marks. From there, the Singaporean trademark office has 12-18 months to review and approve or reject the applications. If the mark is accepted in Singapore, it is the same as if it had been registered directly with the Singaporean office.
I get asked this question all of the time. It’s a loaded question.
Back in an earlier blog post, I explained what a trademark is. Essentially, a trademark could be a word, slogan, design or even a sound that distinguishes the goods and services of one business from those of other businesses. The reason why the question is loaded is because the common law affords certain rights to those who “use” a mark and have “become known” for that mark in relation to goods and services. Therefore, even without applying for a registered trademark, a user of such marks will be afforded some rights.
Under the Trade-Marks Act (“Act”), registrants must “use” their trade-mark or risk expungement (losing their registration). Under Section 4 of the Act, use is essentially deemed to include use on the packaging/marketing of wares at the time of transfer and when it is displayed and advertised in the performance of services, whether by the registrant or a licensee under Section 50 of the Act.
The purpose of this is to ensure that the Trade-Mark Registrar is clean from trade-marks that have fallen into disuse. It is not the intention of the Canadian Intellectual Property Office to allow registrants to “hold onto” trade-marks.
A trade-mark is a word or marking that is intended to distinguish the wares or services of one business from those of others. Typically a trade-mark is a word, design or combination of these elements. However, certain “distinguishing guises” (uniquely shaped goods or containers) and sounds can be trade-marked.
Last night, in Game 5 of the NBA Finals, LeBron James and the Miami Heat delivered on their promise to bring home a championship by closing out the Oklahoma City Thunder, 121-106, in Game 5. LeBron was brilliant throughout the regular season, playoffs and especially the finals. In Game 5, LeBron registered a triple double, with 26 points, 13 assists and 11 rebounds, clearly cementing himself as the best player in the world and perhaps, one of the greatest players in the history of basketball.
While last night was a coronation for “King James”, it was an all around bad night for Kevin Durant. Durant, a 3-time scoring champ, led his team with 32 points, but also had 7 turnovers that contributed to Miami’s romp of OKC. While Durant may not affect the game in as many ways as LeBron, he is 23 years old, a deadly scorer and will only get better. I suspect we may see these two superstars square off in the finals several times within the next few years.
Jeremy Lin became an international sensation when he became the New York Knick’s starting point guard in early 2011. During 12 starts before the All-Star break, Lin averaged a ridiculous 22.5 points and 8.7 assists, leading the Knicks (playing mostly without star Carmelo Anothony) to a 9-3 record during that time. His success led to many media outlets referring to the Jeremy Lin phenomenon as “Linsanity”, clearly a play on the phenomenon known as “Vinsanity”, which was used to describe the attention Vince Carter received when he was playing at an incredible level for the Toronto Raptors. Lin, Harvard graduate, was quick to understand his limitless marketing potential. Lin was not only the starting point for the world’s largest market in New York, he is also of Asian-American descent, a devout Christian, and by all accounts, a pretty nice dude.