Canada joined the Madrid Protocol as of June 17, 2019. This allows for the filing of a single trademark application with World Intellectual Property Organization (WIPO) and designating Canada as one of the member countries where protection is sought.
While this is an easy way to secure trademark protection in Canada, foreign firms and foreign applicants should be aware of some of the pitfalls that can arise.
For example, if a foreign attorney or firm filed the Madrid application with WIPO, lists themselves as the applicant’s representative and designates Canada, the Canadian Intellectual Property Office (CIPO) will send likely a Courtesy Notice to that foreign attorney or firm advising them that only registered Canadian trademark agents, residing in Canada, can represent others before CIPO. In our experience, these notices read something like this:
This is a courtesy letter, no response is required.
The designation notification we have received regarding this application identifies you as the applicant’s representative before the International Bureaus of the World Intellectual Property Organization.
Pursuant to the Canadian Trademarks Regulations persons wishing to represent others before the Office of the Registrar of Trademarks of the Canadian Intellectual Property Office must reside in Canada and be on the Canadian list of registered trademark agents.
Please note that all future correspondence from our Office will be sent directly to the applicant or the appointed Canadian trademark agent.
The Courtesy Letter is rather innocuous looking, especially with the fact that is states “no response is required”. The foreign attorney or firm may therefore miss the significance of what this means – i.e. that all future correspondence will NOT be sent to that attorney or firm.
Moreover, having received this first Courtesy Letter, the foreign attorney or firm may assume that subsequent communications will also be sent to them.
This can lead to cases where correspondence such as examiner reports, office actions and even cancelation proceeding letters are sent directly to the applicant. The applicant who has hired the foreign firm to look after their Canadian filings will not know what to do with such correspondence and may even assume that the matter is being looked after. At the same time, the foreign firm will not receive that correspondence.
The Canadian Intellectual Property Office has also recently reduced the time to respond to office actions and examiner reports, from 6 months down to 4 months. In our view, this creates a perfect storm situation, where Canadian trademark rights can be lost: (i) the foreign attorney or firm will not receive the correspondence, (ii) the applicant will assume that the foreign attorney or firm is looking after their Canadian trademarks, and ignore any correspondence from Canada, and (iii) the deadlines to respond have now been reduced significantly, providing less time to fix or rescue applications.
To avoid this, we recommend appointing a registered Canadian trademark agent who resides in Canada.
If you wish to appoint us as the trademark agent, you can send us an email email@example.com or via the Form below. There is usually no charge for us to become the Canadian agent of record. We also provide competitive flat-fee quotes if there are examiner reports or office actions.