What is the Madrid System?

The Madrid System is a centralized, international Trademark filing and maintenance system that is administered and managed by the World Intellectual Property Organization (WIPO). The changes to the Trade-marks Act and Rules to bring the Madrid System to Canada are slated to come into effect in early 2019.

Once it has been implemented in Canada, a Canadian brand owner with either a Canadian Trademark Application or Registration will be able to use the Madrid System to file one international Trademark Application through the Canadian Intellectual Property Office (CIPO) in order to obtain protection in various other countries or regions who are signatories, including, for example, the U.S., the E.U. and Australia.

A registration obtained through the Madrid System has the same effect as a registration obtained in each of the member countries designated by the brand owner. In addition, a registration obtained through the Madrid System can also be renewed through the Madrid System.

Who Can use the Madrid System?

A brand owner who has filed a Trademark Application or has obtained a Trademark Registration at CIPO and who has a business in Canada, or for individuals is domiciled in Canada or has Canadian citizenship, can file an international Trademark Application with WIPO through CIPO.

How does it Work?

Stage 1 – The brand owner must have filed a Trademark Application in Canada or obtained a Canadian Trademark Registration. Once that has happened an International Application is filed with CIPO in association with the same goods and services as the Canadian Application or Registration. CIPO certifies the international application and then forwards it to WIPO.

Stage 2 – WIPO performs the formal examination to ensure that the international Trademark Application complies with the formal requirements of the Madrid System, registers the Trademark in the International Register and then publishes the International registration in the Gazette. WIPO also issues a certificate of registration and notifies the designated Contracting Parties.

Stage 3 – The Office of the designated Contracting Party performs a substantive examination of the scope of protection of the international registration under domestic laws within 12-18 months.

If an IP Office refuses to protect the mark, either totally or partially, the Refusal Decision can be contested directly with the IP Office concerned, and does not affect the decisions of other designated IP Offices.

If an IP Office accepts to protect the mark, it will issue a statement of grant of protection.

Protection – the international registration is valid for 10 years and can be renewed at the end of each 10-year period directly with WIPO. There is no need to renew with each designated Contracting Party separately.

What are the Benefits and Drawbacks?

The main benefits are that the brand owner only has to file one international application, in one language, and pay one fee in one currency. This simplifies the application process and reduces the time it takes to file multiple applications.

It also simplifies the renewal process, with only one fee paid to WIPO every 10 years, as well as the amendment process, with changes of ownership or to the associated goods and services recorded through a single simple procedural step and payment of a single fee.

However, the international registration must mirror the Canadian Trademark Application or Registration for a period of 5 years from the date of the international Trademark Registration. This means that within that 5 year period, if the Canadian Trademark Application is refused or cancelled, or the Canadian Trademark Registration is cancelled, the international registration will likewise be cancelled.

What if I have more Questions?

For answers to any other questions regarding the Madrid System, or any other Trademark issue, please contact:

Rhiannon Adams – Edmonton Office – (780) 423-8565 – radams@parlee.com