Trademarks: The Madrid Protocol

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The Canadian Trademarks Act has undergone the most dramatic change in recent history. Canada had not been consistent with some of the international treaties governing trademark practice. The goal was to make Canadian trademarks practice more consistent with those practices in other countries. Changes include adopting a class system to group use descriptions, a class based fee structure, dropping use requirements from the application process, and new types of trademarks. Some of these changes will make things easier, some will make it more difficult and costly.

Change #5: The Madrid Protocol

No, it’s not the next Mission impossible movie. The Madrid Protocol is an international treaty that allows one to make trademark applications in several countries at once.

What this means to you

Now every country requires a separate application (with the exception of the EU). The Madrid Protocol is a process that streamlines multi country applications. To take advantage of it, you apply in Canada, and then make a WIPO international application based on the Canadian application. The fee structure makes it cheaper to use the Madrid system if you want to file a mark in several countries. If an examiner in one of those countries raise an issue, it may still be prudent to engage counsel in that country to address those issues.

This is the last in our series about changes to trademarks coming on June 17, 2019. You can catch up with our past coverage on third party protests, the division of applications, declarations of use, the Nice classification system, new types of trademarks and the new requirements to prove distinctiveness for your mark.

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If you're concerned that these changes might have an impact on your business, we recommend that you contact your trademark lawyer today or contact us for a no obligation consultation. 

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