By joining these three international trademark treaties and modernizing its trademark regime, Canada will be aligning its regime to other jurisdictions. Therefore, Canadian businesses will have access to means of protecting their trademarks in various jurisdictions around the world. In other words, trademark filers willfinally have the opportunity to apply for trademark protection in multiple countries via one application form sent to one location (CIPO) and paying one time in one currency (CAD). However, this is not without cost [1] (see the WIPO fee calculator[2]).  By way of example, a new trademark application, containing 2 classes and 4 designations (i.e., U.S., U.K., European Union (covering its 28 Member states) and Switzerland) would cost in the excess of 3000.- CHF just in filing fees (approximately $4,000 (CAD) per today’s foreign exchange rate), excluding professional fees. Trademark Applicants should therefore conduct a cost-benefit analysis of obtaining registrations via the Madrid Protocol versus direct filings in jurisdictions of interest; in addition to IP filing strategies. 

For more information on the above, please contact us.

NOT LEGAL ADVICE.

Information made available on this website in any form is for information purposes only. It is not, and should not be taken as legal advice. Should you have any questions, please do not hesitate to contact us (provided that there is no conflict of interest).

1 WIPO – Madrid – The International Trademark System, available at: https://www.wipo.int/madrid/en/ 

2  International Registration of Marks – Fee Calculation, available at: https://www.wipo.int/madrid/en/fees/calculator.jsp

Other Resources:

Canada is joining five international intellectual property treaties, available at: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02322.html

 

 

Joining the Singapore Treaty, the Madrid Protocol and the Nice Agreement, and Modernizing Canada’s Trademarks Regime — An Overview, available at: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04260.html    

 

 

 

 

Durand Morisseau

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