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What Madrid International Registration trademark system means to you

Tuesday, June 18, 2019 @ 1:58 PM | By Christopher Aide

Christopher Aide %>
Christopher Aide
On June 17 Canada joined the Madrid International Registration (IR) trademark system. So why should Canadian brand owners care?

As a Canadian brand owner you may now file in up to 103 other jurisdictions using an IR, including in key markets for Canadian businesses such as the U.S., China and Mexico.

If used properly IR marks can make it cheaper and administratively easier for Canadian businesses to build and maintain their global trademark portfolios. That said, an effective global filing strategy for a Canadian business usually requires combining the best elements of the Madrid IR, European Union Trademark and national/other regional mark filing systems. Such strategy must be developed on a case-by-case basis.

So what is an IR?

As of June 17, a Canadian applicant will be able to file an IR application using the Canadian Intellectual Property Office (CIPO) as their office of origin, which CIPO in turn will send on to the World Intellectual Property Office (WIPO). So first you will need to have a Canadian application or Canadian registration.

Make sure your Canadian mark’s goods and services cover everything you want — those  descriptions will be the basis for the goods and services in the IR and you cannot expand upon them in that same IR. You would then complete a form ticking off the different jurisdictions outside of Canada that you want the IR to cover, and you calculate fees payable.

Fee calculation is an art. There are four types of filing fees: a WIPO basic fee; a supplementary fee for each class after three classes; a WIPO complementary fee for each country to be covered; and individual fees charged by each member country for which protection is sought (which may be no greater than normal national fees).

If you base your IR on a Canadian basis application, the IR filing date will be the same as your Canadian basis application’s filing date if WIPO receives the IR application within two months from the Canadian application having been filed. You can of course claim Paris Convention priority in the IR if your priority application is filed within six months from the IR filing.

WIPO will forward on the IR application to the local Trademark Office of each chosen Madrid jurisdiction and each Trademark Office will examine the IR for its jurisdiction. WIPO will also quite quickly issue a Registration Certificate for your IR.

Don't be fooled. The IR certificate of registration does not, of itself, confer registered trademark rights. Each local Trademark Office has to register the IR in its respective jurisdiction for your IR to be registered there — they can accept the IR completely; refuse it or give only limited protection (for example only allow protection for some of your goods and refuse it for others).

An IR will be valid for a period of 10 years commencing from its application filing date. You can renew your IR every 10 years.

Advantages of an IR

So what’s good about an IR? Again, in a nutshell it can be cheaper and more efficient.

From a cost perspective, filing an IR is definitely cheaper including because you can file in English or French to cover all your chosen Madrid jurisdictions and so you do not need to retain local agents in each chosen jurisdiction at least for the initial filing, and local language translations are not required.

One fee renews the IR for all covered countries. And one fee records an assignment and/or change of address for the IR in all covered countries.

Administratively, the IR’s 12 to 18 months timeline for examining applications could give you a timing advantage over the length of examination for national applications. And the single form requirements for recording owner address changes or renewals for example means less paperwork.

Bear in mind however that objections to an IR (like office actions, oppositions, etc.) arise on a country-by-country basis and you need local counsel to deal with them.

It could make sense to choose local counsel in advance — especially in more “exotic” countries with lots of formalities (powers of attorney, notarizations, legalizations, seals, stamps, ribbons, etc.).

My usual rule of thumb is the smaller the market the bigger the headache for these sorts of things.

This is part one of a two-part series. Part two: Downsides of Madrid International Registration trademark system

Christopher Aide heads Baker McKenzie’s intellectual property practice group in Toronto. He has more than 20 years’ experience and has co-authored and published the second volume of Markenvertragsrecht (Trademark Contracts Law), as well as numerous articles on various IP topics. He is also a speaker at a wide range of client and academic conferences and presentations.

Photo credit Panuwat Sikham ISTOCKPHOTO.COM

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