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

Frédéric Letendre

YULEX, Attorneys and Strategists, LLP

Canada's accession to both the Madrid Protocol and the Nice Agreement since June 17th, 2019 now makes it easier for Canadian entities to protect their trademarks abroad as well as for foreign entities to protect their trademarks in Canada. Below is a brief overview of the Protocol and the Agreement, their 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 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 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.

What is the Nice Agreement?

The Nice Classification, established by the Nice Agreement, is an international classification system grouping 45 categories of goods and services used for the registration of trademarks. It is now mandatory for every person filing a trademark application in Canada to specify in which class the goods and/or services of its application are in.

For instance, should you wish to file a trademark in association with solar thermal collectors, the agent will file under Class 011 - Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes. It will be the same in every country part of the Agreement. This uniformization will globally ease the search and reduce the risk of confusion.

Some practical advices

  • Identify your entity's trademarks, i.e. the names of the products and/or services you offer as well as your various target markets;
  • 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;
  • Be sure to take the necessary steps to monitor trademark registers and oppose trademark applications that may be confusing with your trademarks;
  • Get the domain name corresponding to your trademarks.

The tricky part

The Canadian Intellectual Property Office (CIPO), as well as the United States Patent and Trademark Office (USPTO), are known to be very strict about the description of products and services in trademark applications. Therefore, for the same application filed in several countries using the Madrid system, the risk of obtaining an office action in Canada or in the USA may be greater than in other countries. Should you receive such office action in Canada, do not hesitate to contact us.

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

Me Frédéric Letendre – fletendre@yulex.ca

Me Virginie Brien Gagnon – vbgagnon@yulex.ca

Mrs. Tracy Boudreau – tboudreau@yulex.ca

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