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Since June 17, 2019, foreign counsel and their clients have been able to file trademark applications in Canada through the Madrid System for the international registration of trademarks administered by the World Intellectual Property Organization (WIPO). However, the Canadian Intellectual Property Office (CIPO) will not communicate with foreign counsel.
Unless a Canadian trademark agent is appointed, CIPO sends notices respecting the Canadian application directly to the applicant, including notices that object to the application and/or request routine revisions. This often results in the loss or misdirection of such notices and ultimately the abandonment of the Canadian application by default.
The progress of trademark applications filed through the Madrid System can be monitored on the WIPO web site at the following URL:
https://www3.wipo.int/madrid/monitor/en/
However, monitoring the progress of pending applications in Canada by this means can be risky because the pendency of new applications is presently 24-36 months. This increases the opportunities for miscommunication to occur.
If CIPO has no objections to the application, it may proceed directly through to registration. However, CIPO has strict rules with respect to the identification of goods and services so objections are routine.
It is our understanding that CIPO will forward its first examination report (or total provisional refusal) to WIPO as well as the applicant. Examination reports contain objections to the application and/or requests for revisions to the identification of goods and services. A response is due within 6 months. It is at this point that most foreign counsel will appoint a Canadian trademark agent if they have not done so already.
After its first examination report, CIPO will only forward notices of refusal, abandonment and registration certificates to WIPO. All other notices, including additional examination reports with any further objections and default notices, are sent only to the applicant if a Canadian trademark agent has not been appointed.
After an application is marked abandoned, we are advised that CIPO will not grant retroactive extensions of time to respond to examination reports by the stipulated deadline - absent other extenuating circumstances. CIPO takes the position that foreign applicants can and should monitor the progress of the application via WIPO or appoint a Canadian trademark agent to receive and report such notices. CIPO does not accept lost and misdirected emails (or mail) as an excuse for failing to respond.
Given the high risk of miscommunication with CIPO, we strongly recommend foreign applicants and their counsel appoint a Canadian trademark agent shortly after filing any Madrid Protocol applications in Canada to ensure that all correspondence from CIPO is brought to their attention in a timely manner.