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900,000th Mark Registered Under International Trademark System

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A recent press release from WIPO (the World Intellectual Property Organization) heralds the 900,000th registration under the International Trademark System, commonly known as the Madrid Protocol or system.

The Madrid system allows an applicant from a signatory country to potentially obtain protection for its mark in up to 77 member countries and the European Union by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). An International Registration obtained through the Madrid system can be maintained and renewed through a single procedure at WIPO.

The system is designed to provide a cost-effective and efficient way for trademark owners to secure protection for their marks in multiple member countries through the filing of one application. While there are debates about how well the Madrid system attains that goal, it certainly gives applicants from member countries another powerful option for international trade-mark protection strategies.

Unfortunately for many Canadian trademark owners (namely those without a presence in a Madrid protocol signatory country), this option is not available to them because Canada, alone among most developed (and many developing) countries is not a signatory to the Madrid Protocol, nor is it likely to be for at least several years. The recent accession of both the U.S. and the EU to the Madrid system has awoken the Canadian Intellectual Property Office (“CIPO”) to the need for Canada to seriously consider joining, but the process is moving very slowly. In 2002, CIPO published an analysis of the issues that need to be addressed in order for Canada to acede to the Madrid Protocol and in 2005 CIPO solicited comments from Trade-mark professionals as to the proposed modernization of Canadian Trade-mark law, including adherence to Madrid. The issue has gained little public attention and given the other priorities of the minority governments in Canada of the past several years, it’s likely to languish for several more years.

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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.