For a Worldwide Reach: Protecting Your Brand Internationally

The “Madrid Protocol” lets trademark owners seek international protection for their marks quickly and efficiently.  Instead of filing separate applications in multiple countries, an applicant can file their mark in 124 countries through a single application at the World Intellectual Property Organization (WIPO).  Canada joined the system in 2019.

How it works

To file an application through this system, an applicant must have an application or registration for a basic mark in their national Trademark Office.  A “Madrid” application for that mark can then be submitted to WIPO, along with

  1. a designation of the countries where protection is sought, and
  2. a list of goods and services with which the mark will be used

Once filing fees are paid, WIPO conducts a formal examination of the mark.  WIPO will grant an international registration to acceptable marks, and automatically notify the national Trademark Offices of the countries designated by the applicant.

The Trademark Offices then decide whether the mark complies with local trademark laws.  If a national Office finds a mark unregistrable, that Office must issue a refusal to WIPO within 18 months.  If the mark is not refused, it is registered in the designated country.

Advantages

The Madrid system offers many advantages to applicants who wish to file in multiple countries.  Notably, the system saves money for applicants filing in a significant number of countries (generally, 10 or more).  In particular, Madrid applications do not require local counsel (unless the national application is refused), potentially offering significant savings.

Additionally, filing a mark using this system can save time and administrative work.  Instead of filing separate applications in multiple countries, an applicant only needs to ‘designate’ countries in a single filing.  Thus, an applicant only deals with one central office.  Further, applicants pay a single set of fees to WIPO when requesting registration in any of the countries that have joined the Protocol.  Similarly, when a mark must be renewed, all fees are paid to WIPO.

Finally, the Protocol offers applicants flexibility.  If an applicant has been granted an international registration, they can later designate additional countries where they wish to seek protection.  The registration date in those additional countries will be retroactive to the date of the international registration, giving growing businesses extra time to identify new markets.

Risks

Though there are many reasons to file a trademark internationally through the Madrid system, there are some potential pitfalls.

  • Central attack” is the most significant concern for most applicants.  Central attack occurs when the mark in the country of origin is removed from the register[1] within five (5) years of the international registration.  A successful central attack will invalidate the international registration and applications in designated countries.
  • Additionally, applicants cannot expand the scope of goods and services in an application once the mark has been internationally registered.  This can be problematic if the applicant expands into new areas of business or develops new product lines.

Applicants should also consider the specific practices of the countries in which they wish to file before submitting their application and/or before designating a specific country.  Refusals may be inevitable if requirements in a designated country conflict with those of the originating country.

Designating Canada

Applicants looking to designate Canada in their international registration should be aware of Canada-specific practices.  The Canadian Intellectual Property Office (CIPO) requires very specific descriptions of goods and services associated with a mark, which often leads to rejections for marks initially filed in less restrictive countries.  Additionally, at CIPO, examinations of Madrid applications generally begin towards the end of the 18 months. 

The Madrid system can save applicants time and money, and is an excellent option for protecting trademarks in many countries.  For more information on registering your trademarks in Canada and around the world, please contact our experts at Brion Raffoul LLP.


[1] I.e., has been withdrawn, lapsed, been renounced, or has been the subject of a final decision of rejection, revocation, cancellation or invalidation, in respect of all or some of the goods and services listed in the international registration

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