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The Madrid Protocol became effective in Canada in June 2019.

A key consideration for Madrid filings in Canada is ‘who receives correspondence related to the application from CIPO’.

If an application is filed into Canada using the Madrid Protocol by an agent or attorney on behalf of the applicant, then several months after filing you will receive a ‘courtesy letter’ from CIPO (the Canadian Intellectual Property Office).  This courtesy letter will confirm that it is CIPO’s policy that unless the applicant designates a Canadian trademark agent of record for the Canadian application, all correspondence on the application will be sent directly to the applicant and not to their non-Canadian trademark attorney.

[Canadian trademark agents are the regulated profession permitted to act on trademark matters for clients – notice they are not called “trademark attorneys” in Canada.]

This creates a substantial risk that Examiner’s Reports (office actions) sent directly to the applicant rather than the trademark attorney responsible for the filing may not be properly identified and acted on in a timely fashion.  If a proper response is not received in a timely manner, the application can be deemed abandoned.

If you are a non-Canadian trademark attorney and want to ensure that you receive all correspondence on your International Applications designating Canada in a timely and accurate manner, you need to designate a Canadian trademark agent for each application.

We can help.  We offer a flat fee ‘agent of record service’.

For the flat fee of $100, we will designate ourselves as the agent on the application, and will ensure that all correspondence is forwarded to you promptly upon receipt.  No further fees of any kind will be incurred, unless you specifically request further assistance (for instance, responding to office actions).

With this service all future correspondence issued will be forwarded to you via email without advice and/or docketing.  It remains your responsibility to monitor the application and we take no responsibility for any correspondence not received from CIPO or subsequently missed deadlines.  Of course, we would be pleased to assist with monitoring and advising on the progress of the application at our usual full-service rate – contact us for more details.

To engage us, use the form below.

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