For those of you familiar with the Patent Cooperation Treaty (PCT) – whereby a single patent application can be filed for multiple jurisdictions (to boil the system down to its barest elements), the fact that Canada is not part of a similar system with respect to trade-marks may come as a surprise. Yet it is true.
The Madrid Protocol became operative on April 1, 1996 and allows an entity in a member State with an existing application in process or an already registered trade-mark on file to extend protection to such other members States as the owner wishes. The United States of America, currently Canada’s biggest trading partner, has been a member for 3 years. Indeed, the list of member States is quite extensive. Yet, Canada remains on the outside.
Now, the reasons given for this state of affairs are extensive. Indeed, the Canadian Intellectual Property Office has published articles on the topic (here and here).
The fact remains that Canada is not part of this system and, until it is, the country and its resident businesses are at a disadvantage in comparison to businesses resident in other jurisdictions. Among other disadvantages, a Canadian company that acquires a trade-mark from a company pursuant to the Madrid Protocol must incorporate a company in a member State in order to acquire that particular trade-mark.
The Canadian Intellectual Property Office has, as noted, undergone a consultation process in order to analyze what changes to the Trade-marks Act would be needed in order to allow Canada to join the “club”. However, the federal government has not put the matter on the list of pressing issues. Perhaps the political manoeuvring in Ottawa has kept the issue from being examined in depth.
Hopefully this will be rectified in the future.
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