Canadian Madrid Applications: Practice Note for Foreign Agents
Canada became a Contracting Party to the Madrid Protocol on June 17th, 2019. This was good news for Canadian trademark owners, because it provides the opportunity to obtain trademark protection in over 100 countries by filing one single international application at the World Intellectual Property Office (“WIPO”).
This is also good news for international applicants wanting to use Madrid to obtain a trademark in Canada. However, as often happens when new processes are put in place, these changes have resulted in questions and requests for clarification from trademark agents outside of Canada regarding certain aspects of Canadian practice relating to Protocol Applications.
Here we address the questions we are most often asked about two Notices issued by the Canadian Intellectual Property Office (“CIPO”).
Notice of Possible Opposition
To meet its obligations under the Madrid Protocol, CIPO must send any provisional refusal on a Protocol Application to WIPO within 18 months of being notified of a Canadian designation. A provisional refusal may be sent during prosecution of the application (i.e. if an Examiner’s Report is issued); however, there may be cases where an Examiner approves the application, but an opposition is filed prior to allowance. Due to current delays in prosecution, a Provisional Refusal based on a filed statement of opposition may occur outside of the 18 month window. Therefore, CIPO has been sending a Notice of Possible Opposition in relation to Protocol Applications.
Receiving this Notice does not mean that a statement of opposition has been filed. It simply allows CIPO to send a provisional refusal outside of the 18 month window if a statement of opposition is filed on that Protocol Application. Typically no action needs to be taken, but foreign representatives may want to reach out to a Canadian agent to double check the status of the Protocol Application.
CIPO is also sending out a Courtesy Letter advising the international Applicant that in order for a person to represent others at CIPO they must reside in Canada and be on the Canadian list of registered trademark agents. What this means is that if there is any type of refusal by CIPO, for example an Examiner’s Report is issued, the response must come from either the Applicant directly or a registered Canadian Trademark Agent.
This Courtesy Letter also lets the Applicant know that many important communications from CIPO will be sent directly to the Applicant if no Canadian Trademark Agent is appointed. This means that the foreign representative won’t receive correspondence from CIPO regarding such things as Notices of Default and subsequent Examiner’s Reports.
As 18 months have now passed since Canada became a Contracting Party, international applicants who have designated Canada should expect to begin receiving Provisional Refusals. In order to ensure quick and efficient receipt and docketing of any Provisional Refusal and other important correspondence from CIPO, Applicants with representation outside of Canada may want to consider appointing a Canadian agent for their Canadian Protocol Application.
For more information about appointing Parlee McLaws LLP as the Canadian agent for your Protocol Application please contact our Intellectual Property and Innovation Group.
Disclaimer: This article is to be used for educational and non-commercial purposes only. Parlee McLaws LLP does not intend for this article to be a source of legal advice. Please seek the advice of a lawyer before choosing to act on any of the information contained in this article.