On 17 June 2019, Canada acceded to the Madrid Protocol. International applicants can now file a single international application and pay one set of fees with the International Bureau (WIPO) for an International Registration (IR), to include designation of Canada to be covered by the IR. Existing IRs can also now be territorially extended to Canada — a request for extension will be treated as if the application has been filed directly in Canada. Any correspondence between the Canadian Intellectual Property Office (CIPO) and an applicant is subject to Canada's trademark laws and regulations.

Unlike some countries where no local (law firm) representative is necessary for the IR country designation, Canadian trademark law effectively requires that if the applicant is not self-represented, their (law firm) representative must be listed as a registered trademark agent in Canada and residing in Canada.

Due to this restriction, CIPO is issuing a Courtesy Letter to foreign (law firm) representatives identified in IRs, that all CIPO correspondence concerning the Canada designation of the IR will only be sent to the applicant, or to a Canadian trademark agent. Any further communications and notices – including approval and registration confirmation, any office actions, notice of an opposition, and notices of default or refusals – will be sent directly to the applicant ONLY. There is a risk that foreign (law firm) representatives may not be made aware of any deadlines for such matters.

In light of this, we recommend that applicants outside of Canada promptly appoint a Canadian trademark agent for IRs filed or IRs extended to cover Canada for that Canada designation. Such Canadian agent could report to either the applicant or to the foreign global coordinating representative, or to both, as applicable. The key is that Canadian deadlines be diarized and dealt with by Canadian counsel so your IRs’ Canada designations are properly maintained. Nothing should fall through the cracks.

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