1. Madrid Trademark Application Filing in Canada: Overview of the Madrid System Darlene H. Carreau Chairperson, Trademark Opposition Board Canadian Intellectual Property Office Banff, Alberta October 16, 2015 1

2. What is Madrid? A global trademark registration system A centralized trademark filing and maintenance procedure A one-stop shop for trademark holders to obtain and maintain trademark protection in export markets An alternative to the national or the regional route The domestic legislations of the designated Contracting Parties (CP) set the conditions for protecting a trademark and determine the rights which result from protection 2

3. Main Features of Madrid Application or registration of a mark (basic mark) Connection between the holder and that CP: establishment, domicile or nationality International Application (IA) filed through office of that CP (Office of Origin) International application must designate at least one other CP Bundle of fees in Swiss francs (basic & standard or individual fees) Further CP may be designated (subsequent designations) Time limit for the Office of designated CP to refuse protection (12-18 months) International Registration (IR) depends on basic mark for five years (dependency – central attack – transformation) 10 year renewal period Centralized management of the IR directly with the International Bureau (IB) 3

4. Madrid – Potential Benefits Streamlined and Cost Effective Process for Multinational Trademark Registration: A single set of formalities A single filing Office No requirements for translation into several languages A single international application produces the same effect as applications filed directly in the various countries A fixed deadline for confirmation or refusal of the legal effects in each designated country Simplifies managing and maintaining rights in multiple jurisdictions after registration 4

5. Trend in International Applications 5

6. International Applications by Origin, 2014 6

7. Overview of the Madrid System Source: World Intellectual Property Organization (WIPO), March 2015 7

8. International Application - Requirements The International Application must include: 1. Filing date and serial number of the basic application and/or registration date and registration number 2. Owner (name and legal entity must be identical to owner of basic mark) 3.Applicant's address 4. Reproduction of mark must be the same as mark in basic application/registration:  If mark in basic is depicted in black and white and a color claim is not included, reproduction must be in black and white  If mark in basic is depicted in black and white and includes a color claim, must include both a black and white reproduction and color reproduction. 8

9. International Application - Requirements The International Application must include: 5. Description of the mark must be the same as description in basic application/registration 6.Indication of type of mark, if mark in basic application or registration is three- dimensional; sound mark; or certification mark 7. List of goods/services that is identical to or narrower than list of goods/services in each basic application/registration, and grouped and numbered in accordance with the Nice Agreement 8.List of designated contracting parties 9

10. International Application - Requirements The International Application must include: 9.Statement that the applicant is entitled to file the IA, specifying that the applicant:  Is a national to Canada  Has a domicile in Canada or  Has a real and effective or commercial establishment in Canada 10

11. Designated Contracting Parties In order to certify, CIPO must receive an indication of at least one Designated Contracting Party (DCP) The MM2 form is specific to the Madrid Protocol therefore any of the countries listed on the form can be designated by any applicant entitled to use Canada as the office of origin 11

12. Entitlement to File Through CIPO An international application can only be filed by a person or legal entity that has the necessary connection (entitlement) through commercial establishment, domicile or nationality with a member of the Madrid Union. In filing an IA though CIPO, the Applicant must specify entitlement grounds:  National of (Citizen of) Canada;  Domicile in Canada – must state Canadian address of the claimed entitlement; or  Real and effective commercial or industrial establishment in Canada – must state the Canadian address of the claimed entitlement Note: Does not need to be the principal place of business, but it must be “real” – i.e. not fraudulent or fictitious. 12

13. International Trademark Domestic Mark = International Mark 13

14. Claiming Priority in the International Application Generally, priority of the International Application will be the filing date of the Canadian Basic and the Canadian basic application may be based on the earlier filing of any application (in a Paris or WTO member). The convention priority of the Canadian basic application can be claimed in the International Application if:  The International Application is made within 6 months of filing the basic application; and  the national office (CIPO as Office of Origin) forwards the complete application to WIPO within 2 months of receipt. 14

15. Role of the Office of Origin Provides information to applicants Certifies the International Application as matching the scope of the Canadian basic application/registration Replies to or remedies certain irregularities Keeps track of the basic mark for the 5 year dependency period Notifications of ceasing effect Forwards official forms on behalf of the holder 15

16. Irregularities Issued by the International Bureau (IB) Upon examination of the International Application (IA), the IB may issue a notice of irregularity if there are deficiencies in the IA – IA is not acceptable. The notice will be sent to both the applicant and CIPO. Certain irregularities are remedied by CIPO (e.g. omission of mark or listing of goods/services, Incomplete identification of applicant, question relating to entitlement of applicant to file IA through CIPO). Other irregularities are remedied by the applicant : some directly with IB (e.g. fees, missing transliteration) and: others through CIPO (e.g. the classification of goods or services or the indication of goods or services). 16

17. International Registration (IR) Date If the IB receives an IA from the Office of Origin (CIPO) within 2 months of the date of receipt of the IA by CIPO: IB inscribes the International Registration in the International Register; and The International Registration date is the date of receipt at CIPO 17

18. How Does Dependency Work? The international application is “dependent” on the basic mark, that is, it must match the contents of the basic mark when it is filed. The international registration must remain “in sync” with the basic mark for 5 years. Thus, if during that five year period, any limitations are imposed on the basic mark– for example the goods and services covered by the mark are narrowed in the basic mark—that limitation must be communicated to the IB, and the international registration, as well as the extension of protection that are in force in the various Madrid jurisdictions – must be amended to conform to the limitation If the basic mark “dies” within the first five years of the grant of the international registration, (i.e. is abandoned or cancelled) then the international registration and all of the extensions of protection in the designated jurisdictions likewise “die” This is the Office of Origin certification process Office of Origin must communicate all “limitations” to the IB Office of Origin must communicate ceasing of effects from limitations and from central attack to the IB This work falls to the Office of Origin and the IB 18

19. If filed directly in foreign office, applicants could get wider scope of protection than they can get via Madrid Request for Extension of Protection IC 25 Clothing IC 25 Belts IC 3 Lotions BASIC IC 25 Clothing, namely shirts, shoes IC 9 Support Belts for Workers IC 10 Abdominal Belts for medical purposes IC 3 Skin lotion IC 5 Pharmaceutical skin lotion International Registration IC 25 Clothing, namely shirts, shoes IC 9 Support Belts for Workers IC 10 Abdominal Belts for medical purposes IC 3 Skin lotion IC 5 Pharmaceutical skin lotion Request for Extension of Protection IC 25 Clothing, namely shirts, shoes IC 9 Support Belts for Workers IC 10 Abdominal Belts for medical purposes IC 3 Skin lotion IC 5 Pharmaceutical skin lotion Must Match 19 Dependency and Scope of IDs

20. Dependency on the Basic Mark – Language of TM If Holder wants to protect a translated version of his basic mark in export markets, he must file in his home country for the translation and then file the international application. However, if the basic mark for the translation is subject to use requirements in the home country and is cancelled for lack of use in the first 5 years, the IR and designations will also be cancelled If cancelled for non-use, the IR and extensions are cancelled within first 5 years 20

21. Dependency, Central Attack and Transformation Basic App/Reg 5 year dependency International Registration Registrant can transform Extensions into national applications and retain original priority date Basic Cancelled Within 5 years International Registration Cancelled Dependency and central attack can be effective in stopping bad faith filings from multiplying through the system Extensions of Protection National Application 21

22. Role of the Office of the Designated Contracting Party (DCP)  The role of each Office of a DCP will follow the domestic legislation in that jurisdiction.  The domestic legislation of the DCPs set the conditions for protecting a trademark and determine the rights which result from protection, including:  Issuing provisional refusals, statements of grant of protection, final decisions, invalidations.  Replacement  Transformation 22

23. DCP’s and the International Application Member countries may issue a provisional refusal of protection under domestic TM law either within 12 or 18 months.  If no provisional refusal is issued within this period, the registration is granted in the particular country. A provisional refusal may be total or partial and the grounds of refusal may include:  Absolute grounds (distinctiveness);  Relative grounds (earlier rights, oppositions) If a total refusal in any Member country issues, it will have no impact on the international registration as a whole. 23

24. CIPO: Designated Contracting Party (DCP) Request for Extension of Protection (REP) to Canada may be made:  Initially in an international application, or  Later in a subsequent designation Examination of REP is the same, regardless of when Canada is designated. The International registration date is treated as the “filing date”  Paris Convention Priority – If claimed, that date is used to determine prior rights.  Subsequent designation – generally, filling date is date filed at IB. 24

25. Examination of REP in Canada REPs will be examined in the same manner as national applications. REPs will be subject to the same refusals as domestic applications:  Both absolute and relative grounds apply – same statutory refusals in examination and opposition.  Same procedural requirements apply. Once an REP is granted protection, it will be registered in Canada and have the same rights and enforcement measures as Canadian national registrations apply i.e. infringement proceedings IR must be renewed directly with IB every 10 years. 25

26. THANK YOU! Follow CIPO on Twitter @CIPO_Canada Connect with CIPO on LinkedIN @Canadian Intellectual Property Office Email: Darlene.carreau@ic.gc.ca 26

27. Appendix - Terminology  Basic mark - the national application/registration upon which an international application is based.  Contracting party – Madrid Member  Designation – the request, in an international application or registration, for protection, in a Madrid member’s jurisdiction  International application – an application for international registration under the Madrid System, which is a request for protection of a trademark in one or more of the Madrid members  International registration – an international registration is recorded under the Madrid System, which facilitates the acquisition of mark rights in multiple jurisdictions  International register - a TM register maintained by the International Bureau (IB) of the WIPO  Office of origin - the IP office of the Madrid member in which the applicant is entitled to file an international application  Designated Contracting Party - the IP Office of a Contracting Party that has been designated in the international, application or a subsequent designation  Statement of grant of protection – a statement to the effect that protection is granted to the mark, sent by the DCP to IB before the expiry of the refusals period  Subsequent designation - a request by the holder of an international trademark registration for extension of protection of the registration to additional contracting parties 27

29. Trademark Application Filings in Canada: Pre and Post Nice Annie Crousset Director General, Trademarks Branch Canadian Intellectual Property Office Banff, Alberta October 16, 2015 29

30. Why Now? Smoother transition More time to start classifying and familiarize oneself with the classes Voluntary until the coming into force Volume of files to classify 30

31. Volumes 31

32. The Coming Into Force of C-31 Will require Nice class before being advertised Applications Not Yet Advertised Will require Nice class before proceeding to registration Advertised Process under review Allowed Will require Nice Class before renewal (12-month window) Registered 32

33. Trademarks Online Tools Trademark Filing (e-filing and e-revised) Canadian Trademarks Database The Goods and Services Manual Trademarks Journal Registration and Renewal of Trademarks (e-renewal and e-registration) 33

34. Trademark Filing 34

35. Trademark Filing In just two days, 323 applications were filed with goods/services grouped according to the Nice classification. 35

36. Canadian Trademarks Database 36

37. Goods and Services Manual BEFOREAFTER 37

38. Nice Class Headings 38

39. Trademarks Journal Table of Contents Advertisement Page 39

40. E-Registration and E-Renewal KEY FEATURES: Enhanced navigation and search functionalities. Ability to pay using a CIPO Deposit Account extended to non-represented clients. Ability to electronically retrieve the acknowledgement receipt, the registration page and the renewal certificate when paying the renewal fee online 40

41. Practice Notice Provision of Nice Classes is voluntary Differences in opinion : the application will proceed without reference to classes The Office will NOT grant extensions of time to include Nice Classes 41

42. General information List of Q&As are available on our website - updated frequently TMB Nice Training - ongoing Webinars Examination Manual 42

43. Treaties implementation update Interdependent activities to performed in parallel: Regulations Business processes IT Training Communication and stakeholders engagement 43

44. Treaties implementation update Next steps : Interim release Main release 44

45. Questions? 45

47. Tips and Traps for the International Registration System Christopher Aide October 16, 2015 IPIC 89 th Annual Meeting Banff Madrid by way of Ottawa:

48. Mosaic v. Monolith 48 bakermckenzie.com

49. Basic Facts about an IR for Advising Canadian Businesses Going Global 49 bakermckenzie.com IR – What is it? Advantages of an IR Disadvantages of an IR IR or CTM or National Mark … or Combo? Crafting the Best Global Filing Strategy – Tips and Traps Conclusion: Time … and Space … and Madrid

50. Maker’s Mark 50 bakermckenzie.com

51. Context 51 bakermckenzie.com

52. Thank You 52 bakermckenzie.com