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Trademark Alert: Madrid Protocol WIPO Applications Designating Canada

Feb 11 2020

It has been almost 8 months since the new regime of trademark legislation came into force in Canada. Since June 17, 2019, it has been possible to designate Canada in an Application for International Registration Governed by Madrid Protocol (WIPO Application) or extend an existing WIPO International Registration into Canada.

Correspondence from CIPO

Under Canada’s new Trademark Regulations, when Canada is designated in a WIPO Application or subsequent designation of an existing WIPO Registration, the Canadian Intellectual Property Office (CIPO) will only correspond directly with the applicant or an appointed Canadian trademark agent. CIPO will not engage with foreign representatives, with the exception of an initial courtesy letter to that effect. 

For applications designating Canada, CIPO is now sending an initial courtesy letter to the representative identified in the WIPO Application, advising that all communications will be sent to the applicant ONLY and not to the representative who filed the WIPO Application, unless that representative happens to be a Canadian trademark agent, residing in Canada.

Recommendation

To ensure that all correspondence from CIPO is timely received, relayed and advised upon if necessary, please consider appointing Ridout & Maybee LLP as your Canadian trademark agent. We would be pleased to file the appointment of agent request at no charge. We will then receive all notices, examination reports, opposition correspondence and registration documents, and docket any corresponding deadlines at CIPO.

As needed, we shall provide our insight and advice regarding best practices in Canadian trademark prosecution and enforcement.  

Next Steps

Please do not hesitate to contact a member of our team for further information regarding appointing us as your Canadian trademark agent or for any other IP issues.

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Tags: CIPO, Madrid Protocol, WIPO