Canadian Protocol Trademark Applications

We provide foreign associates with reliable local support for Madrid Protocol filings in Canada, from examination through registration and renewal.

Use Not Required at Filing

Unlike some jurisdictions, use of the trademark in Canada is not required at the time of filing or registration. However, the mark must be used in Canada within three years of registration to maintain enforceable rights and to defend against non-use challenges.

Goods and Services Requirements

Canada applies a strict classification and clarity standard for goods and services. Descriptions must be specific, use ordinary commercial terms, and be properly classified according to the Nice Classification. Objections are common if terms are overly broad or unclear.

Examination and Prosecution

During examination, the Canadian Intellectual Property Office (CIPO) reviews the protocol application for compliance with Canadian Trademark Act and Regulations, distinctiveness, and likelihood of confusion with prior marks. Office actions may be issued and must be responded to through a Canadian trademark agent. Responses often require amendments and/or arguments.

Opposition Period

Once approved, the application is advertised for opposition. Third parties may oppose the application within two months of advertisement, or otherwise request an extension of time to do so. Canadian agents typically manage opposition proceedings on behalf of applicants.

Registration and Term

If no opposition is filed, or once opposition is resolved, the trademark proceeds to registration. Canadian trademark registrations obtained via the Madrid Protocol are valid for 10 years and may be renewed indefinitely, provided the trademark remains in use in Canada, through the renewal of the Canadian designation of the International Registration.

Local Agent Requirement

While a local agent is not required to designate Canada in an International Registration, a Canadian trademark agent is required to respond to examination reports before the Canadian Trademarks Office, with response deadlines being fixed and only extendable in limited circumstances. We thus highly recommend appointing a local agent as early as registration of an International Registration designating Canada.