Madrid Protocol in Canada: How Opposed Protocol Applications in Canada benefit over National Filed Applications in Opposition Proceedings
In our previous two Newsletters, we discussed how trademark applications filed through the Madrid Protocol are being examined much sooner than national applications. Protocol applications are also procedurally favoured over national applications at the opposition (publication) stage.
The deadline to oppose an application is two months after the advertisement date. The deadline can be extended. For a Protocol application, the deadline can be extended only once, for a maximum of four (4) months. This contrasts with a national application where, depending on the circumstances, the deadline can be extended under various mechanisms for up to sixteen (16) months.
Strict Madrid Timeline results in Procedural Simplicity in Opposition
In Canadian opposition proceedings, parties to the opposition must provide evidence to support their case. The evidence must be in the form of affidavits from individuals with personal knowledge of the facts sworn to. The affiants can be cross-examined. It is common in Canadian oppositions for opponents to amend their grounds of opposition as new information comes to light from either the applicant’s evidence and/or cross-examining the applicant’s affiants.
This also prolongs the opposition proceeding, since each party is given an opportunity to deal with the new grounds.
Lessons Learned & Key advantages
In the case of a Protocol application, once the grounds of opposition have been communicated to the World Intellectual Property’s (WIPO) International Bureau, no new grounds can be added. For national applications, new grounds potentially can be added at any stage in the process if circumstances warrant.
By limiting the grounds to those stated at the outset, as occurs in a Protocol application, the opposition process is procedurally simpler and quicker. It also eliminates the cost and surprise of having to change strategy partway through the process if new grounds are added.
So, if a brand owner knows that they may likely face an opposition in Canada, opting for a Protocol application reduces the opportunities for an opponent to challenge their mark.
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 17th 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.
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.