ARTICLE
19 December 2022

The Madrid Protocol – One Trademark Application, So Many Countries

MG
Minden Gross LLP

Contributor

Minden Gross LLP is a full service business law firm providing counsel in the broad areas of real estate, corporate/commercial transactions, litigation, securities and capital markets, and employment and labour law with global reach through Meritas Law Firms Worldwide. We also advise clients in personal matters related to tax and estate planning.
Have you applied for a registration of a trademark in Canada? Or, do you have a certificate of registration for a trademark in Canada? You can now file for trademark protection...
Canada Intellectual Property
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Have you applied for a registration of a trademark in Canada? Or, do you have a certificate of registration for a trademark in Canada? You can now file for trademark protection in other jurisdictions from inside Canada.

Canada has adopted the Madrid Protocol, which allows you to apply to register your trademark in 129 countries by filing a single international application.

What are the advantages of using this procedure? I'm glad you asked. Below are the top 6 advantages:

  1. One Application - Less Paperwork: Rather than having to file a trademark application in each foreign jurisdiction, you can file one international application seeking protection throughout the member countries of the Madrid Protocol.
  2. One Language: You can file your international application for multiple countries in one language.
  3. Lower Fees: You pay a single set of fees to request registration of your trademark. Also, you don't need to retain local counsel in each foreign jurisdiction to file the application for you. I can do all of that from right here, in Toronto.
  4. Scope: The Madrid Union currently has 113 members covering 129 countries. This means that you can file one single application covering any number of these member parties to the Madrid Union.
  5. Logistics: It is easier to manage your international trademark portfolio because any changes to your application will be made in all the registers of the foreign jurisdictions.
  6. Timeliness: The granting or refusal of the international registration must be done within 2 years from the date of filing the international application. Depending on the jurisdiction, under the current system, we've seen wait times longer than 4!

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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