Now that Canada is the 104th member of the Madrid System, it is integral that non-Canadian business owners understand the importance of retaining the appropriate Canadian trademark practitioner for their matter. Wises has the capacities of both a trademark lawyer and registered trademark agent, offering you a full range of trademark services.
Canada joined the Madrid Protocol on June 17, 2019. Now applicants based in Canada can file a trademark application under the Madrid system, and designate multiple countries of interest. In addition, foreign applicants can designate Canada as a country in which protection of a mark is being sought.
Despite this development, Canadian trademark law remains unique in many ways. One notable feature is the distinction between a lawyer and a trademark agent. Not all agents are lawyers, and not all lawyers are agents. It is important to understand what services each is (and is not) licensed to perform.
Trademark agents are authorized to represent clients before the Canadian Intellectual Property Office (“CIPO”) and the Trademarks Opposition Board. They are responsible for filing, prosecuting and registering trademarks. However, they cannot perform legal services outside of this scope.
Lawyers, contrary to common belief, are not authorized to file a trademark application on behalf of a client unless they are agents. Lawyers are responsible for performing legal services outside of the application process. This includes licensing, assignments and enforcement of trademarks through court actions such as infringement or passing off. If a trademark agent is not a lawyer, they would be unable to act for their client on these types of matters.
Now that Canada is the 104th member of the Madrid System, it is important that non-Canadian business owners understand the importance of retaining the appropriate trademark practitioner for their matter.
After filing an international application with the World Intellectual Property Office (“WIPO”) designating Canada as a country, the application will be processed through CIPO.
However, CIPO will not send all correspondence to WIPO nor the foreign counsel, and does not make correspondence available online. CIPO will only correspond directly with the applicant OR with a registered Canadian trademark agent. This will pose a significant problem for applicants that do not appoint the appropriate professional.
Therefore, it is prudent that foreign applicants and counsel appoint a registered Canadian trademark agent to ensure time-sensitive or crucial correspondence is not missed or accidentally discarded and to avoid getting caught in the peculiarities of Canadian trademark law. This can be done at the time an international application is filed with WIPO.
Best practice is to hire a firm that has both a Canadian trademark agent and trademark lawyer. At Wises, we can advise you on all aspects of the trademark selection, prosecution, and enforcement.