Madrid Protocol Applications – Do I Need to Appoint a Canadian Agent?
There is much confusion surrounding correspondence procedures expected from the Canadian Intellectual Properties Office’s (“CIPO”) for Madrid Protocol Trademark Applications. Specifically, when must a Canadian Agent be appointed and where will CIPO’s correspondence be directed if there is no Agent?
CIPO’s website states that “the Registrar will, when CIPO receives the (Canadian) designation, issue a courtesy letter informing that further correspondence regarding the Protocol application will be directly with the applicant or the appointed Canadian agent”. The courtesy letter, which is sent to the designated representative before the World Intellectual Property Office (“WIPO”), states that “person’s wishing to represent others before the Office of the Registrar of Trademarks of the Canadian Intellectual Property Office must reside in Canada and be on the Canadian list of registered trademark agents”.
CIPO’s courtesy letters have left many confused as to who will be the correspondence recipient, specifically, when no Agent has been designated in Canada.
The following is a breakdown of CIPO’s expected correspondence procedures for Madid Protocol applications:
Further to the above, over the course of an opposition proceeding, the parties will be required to serve certain documents in accordance with the service provisions set out in the Trademarks Act and Trademarks Regulations. An applicant who does not have a Canadian Agent, may provide the name and address in Canada of a person, or firm, on whom service of any document (in respect of the opposition) may be made with the same effect as if it had been served on the applicant. If a Canadian address is not provided by the applicant, the opponent may effect service by sending a notice to the applicant advising that the document to be served has been filed with or provided to the Registrar.
With all the above considered, it is our recommendation that a Canadian Agent be appointed shortly after a Madrid application, which designates Canada, has been filed. This will ensure that the WIPO representative is aware of all correspondence issued by CIPO and it will also assist in avoiding confusion, should the Applicant receive CIPO’s correspondence directly. A Canadian Agent will also be able to provide proper advice in relation to CIPO’s correspondence.
For more information, please contact our firm directly (firstname.lastname@example.org).
Author: Amy L. Croll December 8, 2019
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