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Filing International Trademark Application Under Madrid Protocol

I. WHAT IS THE MADRID PROTOCOL?

The Madrid Protocol is a treaty administered by the World Intellectual Property Organization (WIPO). There are 79 countries party to the Madrid Protocol. Canada is the only developed country not yet party to it. The Madrid Protocol and its companion treaty, the Madrid Agreement of 1891, are the governing instruments of the Madrid System for the International Registration of Marks. As of this writing, fifty-four states, or “Contracting Parties,” have adopted the Madrid Agreement, and a total of sixty-two states have adopted the Madrid Protocol. The members of the Agreement and the Protocol are referred to collectively as the Madrid Union. Under the Agreement and the Protocol, an “International Application” is filed with the International Bureau of WIPO in Geneva, Switzerland, and the Bureau then issues what is termed an “International Registration.” The Bureau does not issue a single trademark registration enforceable in multiple jurisdictions (like a Community Trade Mark registration, for example). Rather, the Madrid Agreement and the Madrid Protocol create a centralized filing system which simplifies the process of obtaining and maintaining national trademark registrations in the member countries of the Madrid Union.

II. HOW DOES THE MADRID PROTOCOL FILING SYSTEM WORK?

1. Who May Apply for an International Registration?

To apply for an International Registration under the Madrid Protocol as a Canadian applicant, the applicant must: (1) be a national of Canada; (2) be domiciled in Canada; or (3) have a real and effective industrial or commercial establishment in Canada. The application must include certification to this effect.

2. The Basic Application or Registration

An International Application must be based on a pending application or registration for the same mark in the applicant's country of origin (as defined above). The country of origin application and registration are referred to in the Madrid Protocol and Canadian Trade-marks Act as the “basic application” and the “basic registration,” respectively.

3. Filing the International Application

The minimum requirements for completion of an International Application originating from Canada are: (1) the filing date and serial number of the basic application, or the registration date and registration number of the basic registration; (2) the name of the applicant, which must be identical to the name of the applicant or registrant in the basic application or registration; (3) a reproduction of the mark; (4) a colour claim, if appropriate; (5) a description of the mark that is the same as the description appearing in the basic application or registration; (6) an indication of the type of mark, if the mark is a three-dimensional mark, a sound mark, a collective mark or a certification mark; (7) a list of goods or services, which must be identical to or narrower than the goods or services listed in the basic application or registration; (8) a list of the designated Contracting Parties; (9) the certification fee; (10) a statement to certify that the applicant is a national of Canada, is domiciled in Canada, or has a real and effective industrial or commercial establishment in Canada; and (11) an e-mail address. The CIPO (referred to in Madrid parlance as the “Office of Origin”) reviews each application to determine whether it meets these requirements. If all is in order, the Office will certify the application and forward it to the Bureau. If the International Application is not in order, the CIPO will refuse to certify it and refund any international fees to the applicant. The CIPO certification fee will not be refunded. The applicant will not be allowed to correct deficiencies in the application; the only remedy is to file a new International Application.

4. Fee Structure

A trademark owner seeking International Registration must pay fees to: (1) the CIPO; (2) the Bureau; and (3) the national trademark office of each Contracting Party designated in the application. Only Contracting Parties that have signed the Madrid Protocol may be designated; members of the Union that have signed only the Madrid Agreement may not. CIPO fees must be paid directly to the CIPO, in Canadian dollars. Bureau fees may be paid either through the CIPO or directly to the Bureau. Direct payments to the Bureau must be in Swiss francs. Payments of Bureau fees through the CIPO must be made in Canadian dollars.

5. Examination by the Bureau

After certification, the CIPO transmits the International Application to the Bureau. The Bureau examines the application to determine whether it meets the minimum requirements of Rule 9 of the Common Regulations. In addition to minimum requirements of the CIPO, the Bureau requires (1) the name and address of the applicant; (2) the name and address of the applicant's representative; (3) an indication, if appropriate, that the applicant wishes to claim priority under the Paris Convention; (4) a declaration, if appropriate, that the applicant wishes the mark to be considered as a mark in standard characters; (5) an indication, if appropriate, that the mark consists of a colour or combination of colours; (6) a transliteration of the mark into Roman characters or Arabic numerals, if appropriate; (7) the applicant's nationality, if he or she is a natural person; (8) the applicant's state or country of incorporation, if it is a legal entity; (9) a translation of the mark into English or French, if the mark consists of a word or words in another language; and (10) any appropriate disclaimers. If the requirements of Rule 9 are not met, the Bureau will send a “Notice of Irregularity” to both the Office of Origin and the applicant's representative. The applicant will be given three months in which to respond. If the irregularity relates to the payment of fees, the required fees must be paid directly to the Bureau. In the case of an irregularity relating to the specification of goods or services, the applicant must respond to the Bureau. If there is an issue regarding classification, the applicant may respond through the Office of Origin. If the applicant does not respond, the Bureau will reclassify the goods or services as deemed appropriate and require the applicant to pay any resulting additional fees within four months of the Notice of Irregularity. If the applicant responds, it must pay any additional fees within three months of the date when the Bureau either accepts or rejects the response. If payment is not received, the application is deemed abandoned. When the Bureau concludes that the goods or services listed in the International Application are vague, incomprehensible or linguistically incorrect, it will look to the Office of Origin for a response within three months and may, in some instances, propose a revised specification. The CIPO, in turn, will look to the applicant for suggestions. The examiner will transmit the applicant's proposed specification to the Bureau if it does not identify goods or services broader than those specified in the basic application or registration. If the Bureau does not receive an acceptable proposal within three months, it may delete the term in question or retain it, with a notation that the Bureau deems it to be unacceptable.

6. Publication by the Bureau

If the Bureau finds the application to be in order, it issues an “International Registration” for the mark. The registration is published in the WIPO Gazette of International Marks, which issues every two weeks. The Bureau notifies each Contracting Party designated by the applicant that the International Registration has issued.

7. Date Appearing on the Certificate of Registration

The certificate of registration bears either (1) the filing date of the International Application, if the International Application is received by the Bureau within two months of the filing date, or (2) the date when the application was received by the Bureau, if the application was received by the Bureau more than two months after the filing date. If the Bureau receives an incomplete application, the constructive date of receipt by the Bureau is the date on which all deficiencies have been remedied. An application is incomplete if it does not identify the applicant, its representative or the Contracting Parties designated by the applicant, or lacks a reproduction of the mark or a specification of goods and services.

8. Review of the International Registration by Designated Contracting Parties

Ordinarily, the date appearing on the certificate of International Registration determines trademark priority. That is to say, the trademark office (Office) of each designated Contracting Party must treat the International Registration as it would a national application filed on that date. In addition, the owner of the International Registration may claim priority under Article 4 of the Paris Convention. This convention priority claim will usually be based on the basic national application, but it may also be another application made in a country party to the Paris Convention or the World Trade Organization (even if the latter is not a party to the Paris Convention), or an application which, by treaty, is equivalent to a regular national filing (e.g., a CTM application). Each Office reviews the International Registration according to its domestic trademark laws and may provisionally refuse protection of the mark in whole or in part. The refusal may only be based on one of the grounds specified in Article 6 quinquies (B) of the Paris Convention. A Contracting Party may not refuse protection on the ground that local law permits registration only in a limited number of classes or for a limited number of goods. If the mark is refused, a Notification of Provisional Refusal must be forwarded to the Bureau. The Bureau then forwards a copy of the notification to the registrant. The notice must indicate a reasonable time limit for responding to the refusal, identify the authority to whom the response should be directed, and state whether the response must be filed through local counsel. The notice may be in either English or French, at the option of the Contracting Party.

9. Time Limit for Refusal

The Office of each Contracting Party has a time limit of either twelve or eighteen months in which to issue a provisional refusal of protection. If the Office does not issue a provisional refusal, and no oppositions are filed, the International Registration receives the same protection in that Contracting Party as a national registration, subject to the possibility of central attack as described below.

10. Local Oppositions

A Contracting Party may declare that International Registrations are subject to opposition after the eighteen month deadline set forth in Article 5(b) of the Protocol. In such a case, the Office of the Contracting Party must notify the Bureau of the possibility that the mark may be opposed after close of the eighteen month period. As in the case of an ex parte refusal, the holder of the International Registration must be allowed a time period, “reasonable under the circumstances,” to respond to the opposition.

11. Central Attack, Independence and Transformation

As noted above, the Madrid Protocol does not provide for an “international” trademark registration as such. Rather, it is a system for obtaining trademark registrations (or “extensions of protection”) among Contracting Parties designated by the applicant. These extensions of protection are enforceable to the same extent as a national registration issued by a Contracting Party. For the first five years following the date of the International Registration, its validity depends on the continued validity of the basic application or registration. That is to say, the International Registration and all of its territorial extensions will be cancelled if the basic application or registration is refused or cancelled. If the basic application or registration is partially refused or cancelled, the International Registration and all territorial extensions will be limited to the same extent. In some cases an International Registration may continue to be vulnerable after the fifth anniversary of the date of registration. For example, an International Registration based on a Canadian “proposed use” application will be invalidated if the applicant fails to file a Declaration of Use in the Canadian application, even if the Canadian application was still pending on the fifth anniversary of the International Registration. If the owner of a basic application appeals a refusal of registration before the fifth anniversary, and an adverse decision issues, the International Registration will be cancelled. Similarly, if an opposition or cancellation proceeding is filed before the fifth anniversary, and the basic application or registration is refused or cancelled after the fifth anniversary, the International Registration will be cancelled. On the other hand, if there are no pending appeals, opposition or cancellation proceedings at the end of five years, the International Registration and its territorial extensions will become independent of the basic application or registration. If the International Registration is cancelled as described above, the holder may request that its former International Registration be “transformed” into national applications bearing the same priority date as the international registration. To effect this transformation, within three months of the cancellation date the registrant must file a national application in each Contracting Party where protection is desired. The application may only specify goods or services listed in the former territorial extension to that Contracting Party, and must otherwise comply with local law.

12. Subsequent Designations of Contracting Parties

A trademark owner may request an extension of protection to additional Contracting Parties even after the International Registration issues. Generally speaking, the procedure is the same as in the case of filing any other International Application. However, the holder of the International Registration may file the request for subsequent designation directly with the Bureau rather than proceeding through the CIPO. A subsequent designation is effective from the date on which it is recorded in the International Register.

13. Renewal

An International Registration must be renewed every ten years. The renewal application must be filed directly with the Bureau. The registrant need not file renewal applications with each designated Contracting Party.

14. Assignment, Licensing and Other Matters

If the owner of an International Registration assigns its rights to another party, the assignment may be recorded with the Bureau. Partial assignments also may be recorded. For example, the owner may assign the mark in connection with certain goods listed in the registration, or in connection with only some of the Contracting Parties to which the International Registration is extended. The validity of an assignment is determined by local law, however. For example, Canadian law requires that an extension of protection to Canada be assigned in connection with the goodwill associated with the mark. In addition to assignments, the Bureau will record license agreements, changes of name, changes of the registrant's designated representative, or any renunciation of rights with respect to goods, services or Contracting Parties.

15. Replacement of National Registrations

If the owner of an International Registration obtains a territorial extension to a Contracting Party where it already owns a national registration for the same mark, the International Registration will replace the national registration, provided that: (a) the goods and services listed in the national registration also are listed in the International Registration; and (b) the extension takes place after the date of the national registration. The replacement is without prejudice to any rights (e.g. priority) flowing from the national registration. After replacement, the national registration will remain on the national register of the Contracting Party for as long as the owner maintains it. Given the possibility of “central attack” (see below), a trademark owner may choose to maintain the national registration at least until the fifth anniversary of the International Registration.

III. ADVANTAGES AND DISADVANTAGES OF THE MADRID PROTOCOL

1. Lower Filing Fees and Associate Charges

Trademark owners seeking trademark protection through the Madrid Protocol can expect a significant cost savings in terms of filing fees and foreign associate charges, particularly in the case of a large filing program. For example, a Canadian applicant seeking to extend protection for a single basic application in a single class, without colour designation, can expect to pay: (1) a certification fee of one hundred dollars to the CIPO; (2) a basic application fee of CHF 653 (about five hundred nine dollars) to the Bureau; and (3) a fee of CHF 73 (about fifty-seven dollars) for each country designated. These fees are considerably lower than the filing fees charged by each country in the case of national applications. Of the sixty-two Contracting Parties to the Madrid Protocol, thirteen, including the United States, have elected to charge an “individual fee” in lieu of the standard fee of CHF 73 set by the Bureau. This fee varies, but must (in theory, at least) be less than the fee charged by each country for a national trademark application. Use of the Madrid Protocol filing system also should result in lower foreign associate charges, since a trademark owner seeking an extension of protection need only appoint a local agent if the application is rejected by the national trademark office. INTA estimates that an eleven-country filing program costing CAD$5,831 under the Madrid Protocol would cost CAD$14,593 if separate national applications were used. Presumably, the cost savings are greater in countries that issue fewer refusals. Not surprisingly, requests for extension of protection represent an extremely high percentage of total trademark filings by foreign residents in countries where applications are not subjected to rigorous examination, such as Austria (89.6%), Finland (86.5%), Denmark (85.9%), and Portugal (85.6%). Conversely, Madrid filings represent a low percentage of total filings by foreign residents in United Kingdom (49.4%), Japan (30.0%), China (22.9%) and Australia (6.4%), where goods and services must be specifically identified, and application requirements are otherwise fairly rigorous. Similarly, countries without rigorous examination requirements account for a disproportionately large share of International Applications filed.

2. Less Paperwork

Before Canada joined the Madrid Union, Canadian companies seeking trademark protection abroad had to file separate applications in each country or jurisdiction where they sought protection. Now, Canadian companies can seek protection throughout the member countries of the Madrid Protocol by filing a single International Application. Moreover, the Madrid Protocol provides for centralized renewal, assignment, and recording of licenses. These are significant advantages in the case of a large trademark filing program.

3. Dependency and Vulnerability to Central Attack

The possibility of central attack is perhaps the single greatest disadvantage of the Madrid Protocol. As noted above, an International Registration becomes invalid if the basic application or registration lapses or is refused, withdrawn, or cancelled within five years from the date of the International Registration. This is an issue of particular importance for Canadian applicants. Less than half of the applications filed with the CIPO between 2000 and 2010 resulted in registrations that remain valid as of this writing.