The number of countries and regions joining the international system for trademark registration on the basis of the Madrid Agreement and its Protocol, continues to grow, with Canada the latest country to deposit an instrument of accession with the World Intellectual Property Organization (WIPO). Its accession to the Madrid System will come into force on 17 June 2019, and forms part of wider reforms to Canadian IP law.
The international system for trademark registration (also known as the Madrid System) makes it possible to request trademark protection in one or more member states of the Madrid System by filing one application at WIPO in Geneva, Switzerland.
The Madrid System dates back to the ‘Madrid Agreement’ of 1891 and was expanded by the ‘Madrid Protocol' in 1996. Since the accession of Algeria to the Protocol in October 2015, all international trademark registrations are exclusively governed by the Madrid Protocol, making the Madrid Agreement essentially a non-operational treaty.
Canada is the 104th member of the Madrid System. After Canada’s accession, the Madrid System will cover 120 countries in total, including the EU member states and the three countries of the Benelux. Post-Brexit, the UK will no longer be covered when designating the EU (click here for the latest advice on IRs designating the UK on Brexit).
The ability to designate such a large number of countries and regions in an international trademark registration makes it an increasingly appealing option for businesses. For an analysis of the pros and cons of the Madrid System, read our article 'International trademarks: Is the Madrid System right for you?'
If your business focuses on several countries or is planning to enter new markets, it is important to determine whether your interests are sufficiently protected in those countries and regions. For advice on the international registration and further information on IP protection in Canada, please speak to your Novagraaf consultant, or contact us below.
Frouke Hekker works at Novagraaf’s Competence Centre. She is based in Amsterdam.