International Trademarks in the Madrid Protocol
The Madrid Protocol allows innovators and businesses to apply for trademark protection in more 100 countries. This is done by filing one international application in one language with WIPO. The Swiss Franc (CHF) is one payment. This allows applicants to save time and money while obtaining and maintaining international trademark protection.
Application for the Trademark renewal using the Madrid system will be examined in accordance with the laws and laws of each of the countries.
The following definitions will help you distinguish between Canadian trademarks filed with the Canadian Intellectual Property Office and international trademarks registered under the Madrid system.
• A “Application basics” refers a national application that was filed in Canada with CIPO. It serves as the basis for an international registration request;
• “Basic registration” refers a Canadian trademark registration that serves as the basis for international registration applications.
• “Protocol Application” refers a request made to the International Bureau of WIPO in order to extend protection of an internationally registered trademark to Canada. It will be checked for compliance with Canadian legislation.
• A “Registering for protocol” refers a trademark that was registered in Canada through a “Protocol Application”
• An “Office of origin” refers the Trademarks Office of a contracting party that can accept and certify an international registration application for a trademark. CIPO is Canada’s equivalent.
• A “Contracting party” refers a member of Madrid Protocol.
• Applying for international registration in Canada
International registration application from Canada
One form, only one transaction, one currency, and one location
An applicant who is eligible can apply for trademark protection in multiple countries by filling out one form and sending it to one location. Then, they will pay once in one currency using Canada’s Office of Origin.
International applications, also known as international application, are filed in Canada with CIPO. CIPO certifies their content before forwarding them to WIPO’s International Bureau.
It is important that applicants note that they cannot file an international application without having first filed a trademark application in Canada or obtained a Canada trademark registration. A basic application is also required.
In order to file an international application for registration, there are certain requirements.
International Bureau is not able to conduct substantive examinations on international registration applications. However, it does ensure that all fees are paid in a timely manner and that the goods and/or services are correctly grouped according to the Nice Classification.
How do you file?
You must use the Madrid system to submit an international registration application. This easy-to-use system can be accessed on CIPO’s website, in English or French. It automatically calculates fees, including the WIPO filing cost and the fee for each contracting entity that has been identified.
CIPO does not charge a fee for certification of international registration applications. However, international applicants must pay fees to the International Bureau in order to file the international applications and each contracting party that have been designated. WIPO fees can be paid in Swiss Francs or CHF to the Madrid eFiling system.
For an estimate of the applicable fees prior to the international registration application being filed, you can either:
• Login to Madrid EFiling and complete an international application.
• Use the online fee calculator of WIPO to calculate how much you will have to pay for your potential application.
It is important to remember that the fees in both cases will be displayed in Swiss Francs and the exact amount due for payment with a Canadian dollar credit card will depend upon the current conversion rate.
You can find more information about fees or the Madrid system on the following webpage.
• WIPO – Payment of Fees – Madrid System
• WIPO Madrid: The International Trademark System
Functions of the Registryar as an Office of Origin
CIPO will send a notification of submission and a payment confirmation to the applicant or representative once an international registration application is submitted. CIPO will examine the application in order to confirm that the details appearing in the application are identical to those appearing in the basic registration or application.
CIPO will forward the application if certified to the International Bureau of the Madrid eFiling System.
CIPO examiners can provide clarification or additional information to the applicant (or their representative) through pre-certification irregularities via the Madrid platform.
Once the international request is certified, it is forwarded to WIPO. After further processing, the applicant (or representative), will receive an email informing the applicant of the CIPO certification.
Further information, including a step-by step guide, on how to apply for international registration via Madrid EFiling is available at the CIPO website.
International registration date
If an international registration application is received by the Registrar, it will be retroactively recognized by the International Bureau of WIPO.Two monthsFrom the moment you received it.
The International Bureau may reject a certified application for international registration if it is not received within the given two-month period.
Certificate of international registration
If the International Bureau receives the International Application and meets all applicable requirements, it will register the trademark in International Register.
The International Bureau will also notify designated Contracting Parties Offices of international registration. They will inform the Offices Of Origin and send a certificate for international registration to the applicant.
However, this does NOT mean that the trademark has been automatically registered in all the designated countries. As stated above, each Contracting Party will inspect the trademark according their respective legislation.
Five-year period of dependency
CIPO, the Office of Origin has the responsibility of notifying the International Bureau of changes in scope of protection in the base application or registration. This includes the deletion of services or goods from the basic registration or basic application (or inactive) within five (5) year of the date of international registration.
If an action, such as an Opposition, is initiated before the expiration of the five-year period and results in a change to the protection in Canada, the same obligation applies.
Transfer of ownership
Normal circumstances will see that the International Bureau receives the request to record the transfer of ownership of international registrations. This is done using the required form.
The transfer of ownership of an international registration can be requested from the Registrar to present to the International Bureau in the event that the new owner is unable or unwilling to sign the original owner. This is only possible if the transferee has a Canadian domicile or is involved in an industrial or commercial enterprise in Canada. This request must be accompanied with evidence of the transfer and a declaration that it was unsuccessful in obtaining the signature of previous owners.