Madrid Protocol: An Alternative Path To Foreign Trademark Protection

On June 17, 2019, Canada implemented the Madrid Protocol. The Madrid Protocol provides trademark owners with an opportunity to file a single trademark application for international registration with the World Intellectual Property Organization (the "WIPO"). Trademark owners can designate members of the Madrid Protocol (e.g. countries) where protection is sought. As of October 31, 2019, the Madrid Protocol has 106 members covering 122 countries. A complete list of the members of the Madrid Protocol can be found here.

How it works

The Madrid Protocol process can be separated into three main steps: filing a national application, filing the international application, and substantive examination by national or regional offices.

Step 1: Filing the National Application

Before you can file your international application, you need to have already filed or registered an application in your home IP office. For Canadian applicants, your home IP office will likely be the Canadian Intellectual Property Office (the "CIPO"). This registration or application is known as the "basic mark". For Canadian applicants, if you already have a Canadian trademark registration, you can proceed directly to step 2.

While it is not required to wait until your basic mark is registered before proceeding to step 2, it may be beneficial to wait for registration before proceeding to step 2. Waiting for registration may allow you to fix any issues arising during prosecution of the basic mark which could complicate steps 2 or 3.

Step 2: Filing the International Application

The second step is to prepare and file your international application. Upon filing your international application, your home IP office (e.g. the CIPO) conducts a preliminary examination to ensure that the international application is for a mark that is identical to the basic mark and that the goods and services of the international application are not broader than those of the basic mark.

Once certified by the CIPO, your international application is sent to the WIPO to check for discrepancies, errors, or mistakes. Once approved by the WIPO, your mark is recorded on the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in each of the territories where you wish to have your mark protected. However, it is important to understand that the actual scope of protection of your international...