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Canada's Accession to the Madrid Protocol: A New Opening to the International Market

Frédéric Letendre

YULEX, Attorneys and Strategists, LLP

Canada's accession to the Madrid Protocol on June 17th, 2019will make it easier for Canadian corporations to protect their trademarks abroad as well as for foreign corporations to protect their trademarks in Canada. Below is a brief overview of the Madrid Protocol, its advantages and some practical advice for your business.  

 

What is the Madrid Protocol?

 

With more than 119 member countries around the world, the Madrid Protocol provides a simplified and centralized platform for its members to register trademarks and obtain international protection. Indeed, if you plan to do business in Canada, you will now only need to file one international registration application, based on your trademark application in your local country, with the International Bureau of the World Intellectual Property Organization (WIPO), and select Canada as one of your chosen countries.

 

The benefits of Canada's accession to the Madrid Protocol

 

The Madrid Protocol simplifies the trademark filing process in several ways, in particular:

  • Simplicity of the application for registration: A single application for registration, an "international application" based on your local trademark application, in a single language (English, French or Spanish), in a single currency and at a single office (WIPO) is sufficient for your trademark to be registered in the member countries of your choice.
  • Reduction of costs: By filing a single application, you will avoid, among other things, the cost of translating documents, converting them into various foreign currencies and the fees of local professionals.
  • Simplified process in case of modification: If a change occurs in your trademark registration, such as a change of address or an assignment, you only need to notify WIPO and these changes will automatically apply to all your trademarks in each country.

Some practical advice

  1. Identify your company's trademarks, i.e. the names of the products and/or services you offer as well as your various target markets;
  2. Register, as soon as possible, the names identified as trademarks in the targeted countries/regions, ideally before using the trademarks, in order to obtain prior rights;
  3. Be sure to take the necessary steps to monitor trademark registers and oppose trademark applications that may be confusing with your trademarks. 

Finally, Canada's accession to the Madrid Protocol is a positive step forward, because not only it will provide greater openness for Canadian corporations to foreign markets, but it will also attract foreign corporations to Canada.

 

If you have any questions about Canada's accession to the Madrid Protocol or in the field of trademarks in general, please do not hesitate to contact us:

 

Me Frédéric Letendre - fletendre@yulex.ca

Tracy Boudreau - tboudreau@yulex.ca

Me Virginie Brien Gagnon – vbgagnon@yulex.ca

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