Canada joining the Madrid international trademark filing system earlier this year came as welcome news to much of the international trademark community. Hidden in that euphoria however, are a couple of Canadian quirks that are likely to trip up unwary applicants and their foreign trademark Counsel.

This Knowledge Bytes article, reviews the limited Canadian Intellectual Property Office (CIPO) communications that will be sent to the World Intellectual Property Office (WIPO) and to foreign representatives of applicants who designate Canada in their applications for international registration. The bottom line is that a resident Canadian trademark agent should be appointed for all such applications, so that important communications from CIPO not go astray or languish, unattended, for an undue period of time.

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Neil Melliship is a Partner and co-chair of the Intellectual Property and Information Technology practice groups at the Vancouver-based Canadian law firm of Clark Wilson LLP. Neil is a lawyer and a registered Canadian Trademark Agent, who actively speaks and writes on trademark and other IP issues including those relating to the Internet, domain name disputes and e-commerce. Neil is consistently rated as a Leading Trademark Practitioner—Individuals: Prosecution and Strategy, by the World Trademark Review (WTR) 1000. Neil is also listed in the Canadian Legal Lexpert Directory as Rated Repeatedly Recommended in the area of Intellectual Property. He has also been repeatedly named by Best Lawyers in Canada in the categories of Intellectual Property Law, Technology Law and Information Technology Law.