ABOUT BRANDS UNDER ATTACK examines how Canada’s accession to the Madrid Protocol will aﬀect brand owners’ ability to obtain or keep their monopoly in the Canadian marketplace.
Madrid Protocol in Canada:
NOTIFICATION OF POSSIBLE OPPOSITION
During the current public health crisis, the Canadian Intellectual Property Office (“CIPO”) remains open for business as usual. Canada acceded to the Madrid Protocol on June 17, 2019. As of May 4, 2020 CIPO began sending to the World Intellectual Property Office (“WIPO’) notification of possible opposition (“NPO”) against the first extensions of International Registrations into Canada (“Protocol Applications”). This means that the granting of protection for these Protocol Applications may be subject to opposition beyond the 18-month time limit for notifying WIPO of refusal of protection in Canada under the Madrid Protocol. Are there special restrictions in opposition proceedings against Protocol Applications in Canada? Yes. Protocol Applications enjoy some key advantages not available to National Applications. For instance,
• No extension of time to oppose a Protocol Application is available 4 months past the initial deadline;
• No new grounds of Opposition possible against a Protocol Application once a Statement of Opposition has been issued and sent to WIPO.
However, Protocol Applications in Canada are examined to the same standards and following the same process as national applications. This includes the possibility of opposition by third parties.
The average time to examination in Canada is slower than many countries. Given the time to examination, the NPO is a step which must be taken to ensure protection is not granted in Canada without the opportunity for opposition. It is also a necessary step to allow a prospective opponent to obtain a 4-month extension of the initial 2-month deadline after advertisement to oppose. Given CIPO’s requirement to appoint a Canadian agent (discussed here,) CIPO will not send to WIPO but will send only to the Applicant and by mail only (or its appointed Canadian agent) any notice that an extension of time has been granted. While a NPO does not mean the granting of protection will be opposed, it operates as a placeholder to allow prospective opponents the opportunity to oppose.
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. This is the only publication, now in its 12th year, which provides strategies and practical advice for managing trademark applications in Canada. Trademark practitioners rely on our publication for solutions to the problems they encounter daily in their practice before the Canadian Trademarks Office.
With our fixed fee approach, for six years in a row we have responded to more Office Actions/Provisional Refusals for trademark owners who manage their own applications than any other firm in Canada.
Disclaimer: This briefing note is not legal or professional advice.