Madrid Protocol international registration

A brand owner extending a Canadian trademark abroad can name, on one application, the contracting parties where it wants protection. Section 65.1 of the Trademarks Act authorizes regulations to carry the Protocol into effect, and the Trademarks Regulations set the Canadian steps. For a buyer, see how to search the trademark and IP registers before buying a brand.

The Canadian steps

Under section 99(1) of the Regulations, the application gives, among other things, the number and date of the basic application or basic registration, a reproduction of the mark, goods or services within that basic filing grouped by Nice class, and the contracting parties for which extension is requested. Under section 100, on receiving an application filed under section 99 by a person who meets the conditions in section 98, the Registrar acts as the Office of origin and presents the application to the International Bureau.

The basic filing stays important. Under section 100(c), the Registrar notifies the International Bureau if, before the end of five years after the date of international registration, the basic application is withdrawn, abandoned or refused or the basic registration is cancelled or expunged for any of the listed goods or services, or if a proceeding begun before the end of that period leads to that result after it.

What to ask

• Which Canadian filing is the basic application or registration, and whether it is still in force.
• Who the holder is: under section 101, a transferee who is a national of, is domiciled in or has a real and effective industrial or commercial establishment in Canada, and who has been unable to obtain the holder’s signature, may file with the Registrar a request for recording the change in ownership, with evidence of the transfer.