Intellectual Property

Entry into Madrid Protocol opens the world to Canadian trademark owners

By Kirsten McMahon, AdvocateDaily.com Managing Editor

With long-awaited reforms to the Trademarks Act coming into effect June 17, Toronto intellectual property lawyer John Simpson says Canada’s entry into the Madrid Protocol is exciting for both trademark practitioners and clients.

“A client in Toronto, for example, will be able to get trademark protection around the world relatively cost-effectively,” says Simpson, principal of IP and new media law boutique Shift Law. “They can also have their local IP lawyer quarterback their worldwide protection strategy and manage an international portfolio.

“We are excited about it, and Shift Law is actively putting together our service offerings based on this new regime,” he tells AdvocateDaily.com.

Canada’s accession to the Madrid Protocol — a multi-jurisdictional filing system for obtaining trademark protection in other countries using one application — is one of the major changes coming to the Trademarks Act in June, Simpson says.

The system, administered by the World Intellectual Property Organization (WIPO), currently has 104 members, covering 120 countries. “These members represent more than 80 per cent of world trade, with potential for expansion as membership grows,” states WIPO’s website.

"Canada is late to the party and is getting considerable worldwide attention for just joining," Simpson says.

Although the Madrid Protocol will make it easier for Canadian clients to register their marks around the world, Simpson says it's a complex system.

“Many Canadian trademark practitioners are signing up for every seminar or webinar they can to figure out how it works and understand the deadlines and implications,” Simpson says. “Secondly, Canadian IP lawyers are preparing for how the system is going to affect our practices, existing ways of advising clients, fee structures, etc."

Being able to avail Canadian clients of the Madrid system to register trademarks in other countries based on one application is great news, he says.

“Our new service offerings will include assisting our clients with registering around the world and helping them develop an international strategy,” Simpson says. “We are also prepared to help foreign applicants — who previously would not have considered coming into Canada — navigate our trademark system.”

That said, there are reasons that a client should register directly in a member country rather than going through the Madrid system, he says.

“Registrations obtained through the Madrid system are always somewhat vulnerable because if the ‘base application’ — the application you started within your home country — never registers or gets invalidated, then all of your dependent registrations will also fall,” Simpson notes.

“In other words, multiple Madrid registrations are vulnerable to a ‘central attack,’” he adds.

As well, the initial costs are lower if you file through the Madrid system, but Simpson says it may be more expensive to retain a lawyer in the member country to fix issues that may arise down the road.

“Madrid member countries also classify goods and services differently, so things can get complicated in trying to modify one application for multiple countries as opposed to just filing in each country independently,” he says.

However, applicants with a limited initial budget who want to quickly secure trademark protection in multiple countries, such as startups or web-based businesses, are recommended to go through the Madrid system, Simpson says.

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