Oziel Law Blog

Trademarks Abroad: The Madrid System and Canada

by Kristine on July 27, 2017 No comments

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.

Implications

While the last step means that not all trademark applications are guaranteed to be accepted by a foreign trademark office, the Madrid System certainly reduces the cost and complexity of protecting your mark in another country. You can use a local trademark lawyer and the Canadian Intellectual Property Office as your point of contact instead of searching for a lawyer in a foreign directory.

The ability to apply for a Canadian business to obtain international registration and to receive protection in other countries through a streamlined registration process will be a competitive advantage. However, foreign businesses will gain a similar advantage, too. A U.S. business with a registered trademark can soon obtain protection in Canada in a faster and simpler process in comparison to building an application from scratch with the Canadian trademark office.

An additional concern is the fact that the Madrid System lacks substantive review of marks for confusion or registrability before forwarding the application to a country’s trademark office. As a result, there is an increased burden on businesses to monitor and protect its trademarks in Canada from similar or identical foreign marks.

While it is always wise to be proactive in protecting your marks, now especially is the time for Canadian businesses to start addressing its trademark needs:

  • File applications for marks already in use or marks that you propose to use in Canada
  • Be aware of foreign companies that have similar or identical marks to yours who may want to expand into Canada through the Madrid System
  • Consider whether you can benefit from less traditional trademark protection, such as sounds and three dimensional designs
  • Keep in mind the direction of your business: what goods and/or services are you providing now and what goods and/or services do you want to provide in the future?

When the time comes to register abroad, also keep in mind what countries you actually need protection in. While the Madrid System increases cost-efficiency and reduces the hassle of the registration process, approaching the system with a broad stroke mentality might mean costly opposition proceedings in countries you aren’t actually using your mark in.

For the time being, you’ll still need to register your mark domestically in every country you wish to seek protection in.

KristineTrademarks Abroad: The Madrid System and Canada