Canada’s Intellectual Property Firm

A little over a month has passed since Canada acceded to the Madrid Protocol. The moment was historic, with the Canadian Intellectual Property Office (CIPO) being the first office to allow trademark applicants to use the Madrid e-filing system from the first day. As Canadian and foreign practitioners alike adjust to the new landscape, it is important to understand the particular procedures for Madrid applications which Canada has put in place.

Where applicants use the services of a foreign representative before the International Bureau (WIPO), there is a procedural anomaly for Canadian designations which might come as a surprise to many who use the Madrid system.

Under Canada’s new Trademarks Regulations which came into force on June 17, 2019, CIPO is only authorized to send correspondence to the applicant or an appointed Canadian trademark agent, and not to foreign representatives. Some, but not all communications, will also be sent to WIPO.

Where a Canadian designation identifies a foreign representative before WIPO in respect of the International Application or Registration, CIPO will issue a “Courtesy Letter” to the foreign representative, informing them that all future correspondence will be sent only to the applicant, or an appointed Canadian trademark agent.

Thereafter, CIPO will not send any further communications to the foreign representative.  Instead, CIPO will send any notices it issues to the applicant (unless a Canadian trademark agent is appointed). It will also send some notices to WIPO, including Total Provisional Refusals, Confirmations of Total Provisional Refusals, and Statements of Grant of Protection.

It is particularly noteworthy that there are important communications which CIPO will not send to WIPO, and which it will send only to the applicant (or its appointed Canadian agent). These important notices include Approval Notices, subsequent Examiner’s Reports (i.e. where an objection has been maintained but the applicant has a further opportunity to respond), Notices of Default, and Refusals (with an appeal deadline). This means that in many cases, an administrative or statutory deadline will be set, but WIPO (and therefore the foreign representative) will not be informed.

Moreover, applicants who have retained the services of a foreign representative might be confused and perhaps irritated to receive notices which they expected their representative to be handling.

To avoid such correspondence being sent directly to applicants, and to ensure that foreign representatives are aware of all correspondence issued by CIPO (rather than relying on the applicant to forward such communication), foreign representatives may wish to consider appointing a Canadian agent for the Canadian application. The Canadian agent can then report the issuance of such letters to the foreign representative and provide comments or advice if desired.

For more information about appointing our firm as your Canadian agent for such communications, please contact a member of our Trademarks & Brand Protection team.

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.