Canada has acceded to the international trademark system administered by the World Intellectual Property Organization (WIPO). This means that Canada is now a party to the Madrid Protocol, an international trademark treaty designed to harmonize and streamline international registration of trademarks. The Madrid Protocol will enter into force for Canada on June 17, 2019. This is big news, and not just for Canadian trademark owners. It’s also very important for U.S. trademark owners, because it makes it much simpler to include Canada in your trademark registration plans.
How Does this Affect U.S. Trademark Owners?
As of June 17, 2019, it will be possible to conduct your U.S. trademark search with an added Canadian search. Then, based on the results, you can simultaneously apply to register your trademark in the United States and Canada. Given the cultural affinities and integration of the economies of these two nations, it only makes sense to consider them as one single market. With Canada’s accession to the Madrid Protocol, you can file your Canadian trademark application as an international application based on your U.S. application. And it can be done simply and expeditiously.
Canada did not previously follow the Nice classification of goods and services. This means that under the regime in effect prior to June 17, the filing fee for your trademark application was the same no matter how many different goods and services the application listed. This changes after Canada’s accession to the Madrid Protocol and adoption of the Nice Classification system. Now, Canadian trademark applications will require separate filing fees for each International Class of goods and services. U.S. trademark owners should be familiar with this, since it is the same system in place in the United States.
U.S. Trademark owners can now easily file a Canadian trademark application in conjunction with a new U.S. application. This will make it much simpler for U.S. businesses to stake a claim to their trademarks in Canada. Canada’s adoption of the Nice classification system may raise the filing fees for certain Canadian trademark applications. But this will only be an issue for trademark applications that list a very wide array of goods and services, which is a questionable practice for reasons that go well beyond the cost of the application filing fees.