Fundamentals of the Madrid System

The Madrid System will be implemented in Canada on June 17, 2019. This system allows for the international registration of marks in more than 120 countries with one single procedure, one fee, one currency and in one language.

How do you file a Madrid application?

• We can help! Madrid applications are filed with the International Bureau of WIPO.
• The Madrid application is based on a national application in one of the member countries.
• Canada will be a member of the Madrid system as of June 17, 2019.
• Applicants can file their international application at the same time as their national application or any time thereafter.

Advantages of the Madrid System

• Possible cost savings due to the streamlined filing processes, particularly if filing in 3 or more jurisdictions.
• Streamlined administration and maintenance of the registration.
• Ease for expanding trademark protection – you can simply apply to designate additional countries.
• All examination periods are fixed at either 12 or 18 months.

Disadvantages of the Madrid System

• “Central Attack” – if the national application is rejected or refused within five years from the date of application, the Madrid application will collapse. The owner of the application will need to “convert” the Madrid application to national applications in the designated countries which will incur significant costs.
• Deadlines for responding to office actions vary and can be considerably short.

If a Madrid filing is of interest, please contact Paula Clancy.

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Photo: WIPO