Page 13 - CCCA 243725 Magazine_Winter 2015

{ PRactice ManaGeMent }

“ In-house counsel should not wait

until the Madrid System is in

force in Canada before protecting

their brands internationally. Key
”
markets, present and anticipated,
should be protected.

Canadian trademark registrations, where tion. While the Canadian government has one set of fees to protect its brand in up
investigations will not be helpful in deter- not yet announced the fees under the new to approximately 100 different countries/
mining whether a mark has been used in law, it is anticipated that brand owners territories. Canada is presently one of the
Canada, since when, and in connection will face signifcantly greater fling costs, few industrialized countries that is not a
with which particular goods or services. particularly for those applications cover- member of the Madrid System.
ing a wide range of products and services. Although the Madrid System has the
Act before increased government Fees ability to be a cost-effective “one-stop
Come into effect streamlining international trademark shopping” mechanism for international
Unlike in virtually every other country, protection brand protection, it may not be worth-
the Canadian government’s fee to register Currently, Canadian businesses seeking to while if foreign registration is being
a trademark is not yet dependent upon protect their brands outside Canada must sought in limited jurisdictions. Further-
the breadth of goods and services covered typically fle a separate application in each more, the Madrid System has its own pe-
by the application. Unfortunately, this fat foreign country of interest, although a culiarities and limitations. For example, if
fee bargain will change once the new law single application can be fled to cover the Canadian application or registration
is implemented, as Canada will be imple- the European Community. Once the new is either refused or cancelled in whole or
menting the Nice Classifcation system. law is in effect, Canadian brand owners in part within fve years of registration,
This system involves categorizing goods will have one more tool available to assist the international registration will also be
into 34 different classes and services into them in protecting their brands outside cancelled, unless it is converted into inde-
11 different classes. Canada: the Madrid international trade- pendent flings in the member countries/
In many countries, such as the U.S., mark fling system. The Madrid System territories to which it was originally ex-
there is a separate fee for each class of will allow a Canadian brand owner to fle tended. Thus, the Madrid System is typi-
goods or services covered by an applica- one application, in one language, and pay cally unsuitable if there is concern that

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