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Territorial Extension under the Madrid Protocol to Canada

In our previous blog Madrid Protocal Applications we discussed applications for an International Registration where the Canadian Trademark Office is the Office of Origin. This month we are discussing Protocol applications received from the International Bureau of WIPO to extend protection of an international registration to Canada.


Protocol Applications

A territorial extension to Canada is initiated by applying in another contracting party for an international registration. An application is filed with the International Bureau, originating from that country, that designates Canada as one of the countries or regional IP offices in which protection of the trademark is sought. After the International Bureau records the trademark in the International Register, it forwards the designation to the Registrar of Trademarks in Canada. Designating Canada may be part of the original application for international registration or may be made via a subsequent designation.


Once the international registration is made or the subsequent designation is recorded by the International Bureau, an application is deemed filed for the registration of the trademark in Canada (“Protocol application”).


Section 106(1) of the Regulations sets out how the filing date of a Protocol application is determined. It is also possible to claim convention priority in a fashion like asserting such a claim for a regular application.


CIPO will only send correspondence relating to the application to the applicant or its Canadian agent. To ensure that all relevant correspondence is received in a timely fashion and deadlines are monitored it is prudent to appoint a Canadian agent when Canada is designated. This will also be important concerning subsequent proceedings under section 45.


The domestic examination process applies to a Protocol application. The Registrar must not refuse a Protocol application without first sending to the International Bureau, before the end of 18-month period after notification of territorial extension, a notification of provisional refusal stating the Registrar’s objections. If the Registrar refuses a Protocol application the Registrar must send a statement of confirmation of total provisional refusal to the International Bureau.


A Protocol application will be advertised for the purposes of opposition if it is found to comply with all Canadian requirements for registration.


If a Protocol application meets the requirements for protection of a trademark in Canada and no opposition has been filed, or any opposition has been decided in favour of the applicant, a registration certificate, (a “Protocol registration”), will be issued to the applicant and a statement of grant of protection will be sent to the International Bureau specifying the goods and services protected in Canada.


If the Registrar fails to notify the International Bureau within the 18- month deadline of a provisional refusal or the possibility of issuing one after that deadline due to opposition, the Protocol application will be granted protection. In this case, it would become a Protocol registration without the application being advertised, and there would be no opposition period. Because of delays in prosecution of applications CIPO sends Notices of Possible Opposition. This allows CIPO to send a Provisional Refusal outside the 18-month period if a statement of opposition is filed relating to the application.


The International Bureau will notify the Registrar of the renewal of an international registration designating Canada. If there is a Protocol registration, the renewal will be recorded on the Canadian register.


If the international registration is not renewed, the International Bureau will also notify the Registrar. In this case, the Protocol application will be deemed to have been withdrawn or the Protocol registration will be deemed to have been expunged at the expiry of the international registration.


If the International Bureau notifies the Registrar of the recording in the International Register of a change in ownership in respect of Canada of an international registration on which a Protocol application or a Protocol registration is based, the Registrar must record the transfer of the Protocol application or register the transfer of the Protocol registration.


The International Bureau may cancel an international registration in whole or in part at the request of the Office of origin due to the cancellation of the basic application or registration. The Madrid Protocol allows the holder of the international registration to revive the cancelled portion of their Protocol application or registration by requesting that it be “transformed” into a domestic application or registration. Transformation will be possible only if the international registration is cancelled by the International Bureau following a notification by the Office of origin that the basic application or registration is cancelled, but not if it expires for failure to renew, or is cancelled or restricted at the request of the holder or for any other reason. An application for transformation must be filed with the Registrar within three months of cancellation. This three-month period cannot be extended. The registration resulting from application for transformation will be deemed to have the same date as the Protocol registration.


If a country or regional IP office withdraws from the Madrid Protocol, the denunciation provisions of the Madrid Protocol apply to a holder of an international registration on which a Protocol application or registration is based. The procedure to be followed is like transformation and permits a holder of an international registration originating in the denouncing country or regional IP office to apply to convert their Protocol application or registration into a domestic application or registration.


If you have questions, please contact me at mckeown@gsnh.com.


Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370


These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.

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