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Madrid Protocol in Canada:
Protocol Applications are Getting Preferential Treatment in Canada over National Applications

As the saying goes, “the data does not lie”. Google and Facebook are known to collect location, search and behavioural data on their users to gain insight into their preferences. So, what does the Canadian trademark data reveal about how Madrid Protocol users are treated in Canada. In our next two editions, we will take a deeper dive into some of this data and discuss its insights.

Background

Compared to European countries as a block or the USA, the trademark examination and application process in Canada is slow. Some National Applications filed over 3 years ago have yet to be assigned to an examiner.

It has now been over 2 years since Canada joined the Madrid Protocol. In this time, Canada has had to shorten its examination turnaround time, at least, to comply with its international obligations.

Lessons Learned

According to the most recent data, 84% of Protocol Applications filed in Canada are examined within 18-24 months vs. 6% for National Applications. That is, Protocol Applications have so far been the most advantageous for brand owners in terms of rate of examination over the last 2 years. During that time, we can see that filing in Canada through Madrid Protocol results in faster examination than filing nationally.

Below is a chart comparing and showing the rate of examination between Protocol and National Applications, as of May 26, 2021:

Source Ipvisibility Analytics, 2021

To Speed up the Process even more

Getting to examination or relative early examination is only one of the hurdles to registration. Another one, for instance, is knowing how to proactively navigate the goods and services labyrinth to minimize the likelihood of an objection to the description of goods or services with the “pick list” at the time of designation.

For more information on this, please contact a member of our team at: newsletter@ollip.com

About Us

OLLIP P.C. is an intellectual prop­erty agency and law firm with offic­es in Ottawa and Toronto, Canada.

We are the authors of the leading treatise Odutola on Canadian Trademark Practice: Vol. I Prosecution and

Vol. II Opposition, Summary Cancellation and Appeals, published by Carswell, a Thomson Reuters Business. Now in its 16th year, it is relied on by the Courts, the Trade­marks Office and the trademark profession.

OLLIP P.C. has one of the few lawyers who have been certified by the Law Society of Ontario as dual specialists in trademark and copyright law.

From advice, creation to enforcement – from brands, technology to copyrights – for over 24 years, successful business­es and their counsel have relied on us.

Editors:
Karen Hansen

Bayo Odutola

OLLIP P.C.
Ottawa Tel.:  613.238.1140 Fax: 613.238.5181
Toronto Tel: 647.496.0313 Fax: 647.496.0315

 

Disclaimer: This briefing note is not legal or professional advice.