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The Madrid System of International Registration of Trade-marks

Two treaties, the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol Relating to the Madrid Agreement, govern the Madrid System. The Madrid Agreement is an old treaty (dating back to 1892) having a number of difficult features, which have prevented certain countries, including Canada, from adhering. The Madrid Protocol was adopted in 1989 and introduced important operational improvements to the Madrid Agreement. Accession to the Madrid Protocol is possible without becoming party to the Madrid Agreement.

There are 79 countries party to the Madrid Protocol; Canada is the only developed country not yet party to it.

The Madrid Protocol provides a simplified and cost-effective option for the registration of trade-marks in multiple jurisdictions. In essence, trade-mark owners have the option of protecting their trade-marks in one or more countries party to the Madrid Protocol by simply filing one application (in English, French or Spanish) with their national trade-marks office and paying a single corresponding filing fee. The Madrid Protocol also facilitates the management of an international trade-mark portfolio by easing the requirements for administrative changes to a file (e.g., owner's change of address) and for renewal. Additional information on the Madrid Protocol.

It is important to note that it is not mandatory for trade-mark owners whose home jurisdiction is a party to the Madrid Protocol to use the Madrid Protocol – they can still choose to file individual applications in each country where protection is sought.

Implications

The option to use the Madrid Protocol is a business decision for individual firms – the system can be used in instances where there is a clear advantage to doing so, and in instances where there is no such advantage, separate applications can be filed in each country where protection is sought.

Small and medium-sized businesses may benefit from using the Madrid Protocol, since it may be a cost-effective alternative. In each country where protection is sought, companies not using the Madrid Protocol must file a separate application in the language stipulated by each country, accompanied by a filing fee in each country's currency. In these circumstances, many firms seek assistance from a trade-mark agent in each foreign country to help ensure their applications are compliant with the various administrative requirements. Firms not using the Madrid Protocol may find the process expensive, complicated and time-consuming, thus increasing their overall cost of doing business.

However, the fee structure of the Madrid Protocol is such that the benefits in the reduction of application and renewal fees are directly proportional to the number of countries where protection is sought. In other words, a business seeking to register a trade-mark in only two or three foreign jurisdictions may find the Madrid Protocol more expensive to use than a direct application to each of the national trade-marks offices in each country.

Businesses looking to expand their markets overseas may also benefit from lower transaction and compliance costs associated with registering and maintaining trade-marks using the Madrid Protocol.

However, under the Madrid Protocol, the scope of coverage of an international application is tied to the scope in the home application or registration. A business that has a narrow description of goods or services in its original domestic application may therefore be unable to take full advantage of the Madrid Protocol.

For the first five years, any registration granted through the Madrid Protocol is dependant on an applicant having a valid trade-mark registration in his or her home country. Should the home country application be refused or the registration subsequently be revoked or declared invalid, all registrations obtained through the Madrid Protocol are automatically revoked. In the case of such a revocation, however, the international registration may be transformed into national or regional applications, all of which would maintain the original filing date of the international registration.

Questions to Consider

  1. What would the benefits be for Canadian firms in using the Madrid Protocol? Is it likely that Canadian businesses will use it for some international registrations? Who will likely use it more – large or small companies?
  2. What would be the disadvantages to Canadian firms in using the Madrid Protocol?
  3. How would foreign firms benefit from using the Madrid Protocol to protect their trade-marks in Canada?
  4. Are there overall economic benefits to Canada in using the Madrid Protocol?

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