Canada’s Intellectual Property Law Firm

Protecting your brand outside Canada: What Canadian brand owners need to know about the Madrid international trademark filing system

Within the next two years or so, Canadian brand owners should have one more tool available to assist them in protecting their brands outside Canada: the Madrid international trademark filing system (the “Madrid System”). The Madrid System will allow a Canadian brand owner to file one application, in one language (including English or French), and pay one set of fees to protect its brand in up to 111 different countries/territories.

The Madrid System is a centralized, international filing system administered and managed by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. Once implemented, a Canadian brand owner will therefore be able to file one application through the Canadian Intellectual Property Office, based on its previous Canadian application or registration, to protect its brand in the U.S., Mexico, the E.U., Australia, New Zealand and India, for example.

The Madrid System offers a cost-effective alternative to filing national or regional applications with intellectual property offices all around the world, as a registration obtained under the Madrid System has the same effect as a registration obtained in each of the member countries/territories designated by the brand owner at the time of application or later.

Key benefits of the Madrid System include:

  • a single international application to file. When filing through the Madrid System, there is no need to engage trademark agents in each jurisdiction of interest, nor is there any need for costly translations into multiple languages or formalities, such as notarized and legalized documents.
  • a single international registration to renew. The owner of an international registration extended to multiple member countries/territories need only pay one renewal fee every ten years.
  • a straightforward amendment process. Any changes in the ownership of, or to the goods and services associated with, the international registration may be recorded through a single simple procedural step and the payment of a single fee.

Like any other tool, the Madrid System has its peculiarities and limitations, which must always be kept in mind. For example: 

  • An international registration must mirror the home application or registration for a period of five years from the date of the international registration, which means in practice that if a Canadian application or registration upon which an international registration is based has a very limited description of goods or services, the international registration will too.
  • In addition, if the Canadian application or registration is either refused or cancelled, in whole or in part, within this five-year period, the international registration will likewise be cancelled, unless it is converted into independent filings in the member countries/territories to which it was originally extended.

Offering the potential for simultaneous protection in up to 111 member countries/territories, the Madrid System is a “one-stop shop” for obtaining (and maintaining) effective trademark protection in multiple jurisdictions through a single point of contact. For Canadian brand owners that do business outside Canada, the Madrid System has the potential to be a convenient and cost-effective mechanism to protect their brands. However, in some circumstances, the Madrid System is not the preferred route for international trademark protection, and brand owners would be well advised to seek out the strategic advice of experienced trademark counsel before deciding how, and where, to protect their brands around the world. 

For further information on the Madrid System, or on the upcoming amendments to the Trade-marks Act, please contact a member of our firm’s Trademarks group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.