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News, articles and blog posts related to Intellectual Property, Trademarks and Patent Law

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Legal Update: CANADA JOINS THE INTERNATIONAL TRADEMARK SYSTEM

The addition of Canada to the International Trademark Registration system (commonly referred to as the Madrid System, named after the city where the initial treaties were adopted) is a significant expansion of the scope of the Madrid System for both existing and new International Trademark owners.

What is the Madrid System?

Many of you are already familiar with the Madrid System for protecting trademarks. But for those of you who don’t know, the Madrid System is a centrally managed trademark system that provides an efficient and cost-effective alternative to securing trademark protection in overseas countries.

All trademarks are territorial – meaning they only protect the country they are filed in. An Australian trademark registration only protects your trademark in Australia. A United States trademark registration only protects your trademark in the United States. And a China trademark registration only protects your trademark in China.

The usual route to protect a trademark in any one country is to lodge a trademark application in the government office of each country (the direct national route).

However, with the Madrid System you can use your “home” trademark as a basis to file trademarks in overseas countries.  Compared to the direct national route, the Madrid System can save fees on using local agents in each individual country to file your trademark application as well as other costs such as translations.  There are some costs in setting up the International Registration, but generally the Madrid System is a more cost-effective system than the direct national route when you want to protect your trademark in 3 or more overseas countries.

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There are some pre-requisites to using the Madrid System, and there can be advantages to using the direct national route depending on the nature of the trademark itself, the countries you want to protect and on how your goods might classified within the class system practices of the relevant country. 

But generally, the Madrid System is a good option for trademark owners who need to protect their brands in a cost-effective and efficient manner overseas.

Broader Protection for International Trademarks

The Madrid System is only available to countries that are members of the Madrid Agreement. A full list of member countries can be accessed here. There are currently 104 members covering 120 countries throughout the world. These 120 countries represent more than 80% of world trade.

Australia has been a member of the Madrid System since 11 July 2001 and Australian businesses are now leading the way as one of the top-country users of the Madrid System. There has been an increasing trend in the use of the Madrid System that is closely aligned with the increasing number of member countries.

In addition to Canada joining the International Trademark system on the 17 June 2019, 

  • the Brazil House of Representatives has approved Brazil to join the Madrid System, 

  • Hong Kong has already proposed its Parliamentary Bill of legislative amendments to join, and

  • Malaysia is well advanced in adopting legislative amendments to join the Madrid System.  

This is great news for Australian businesses! 

As new member countries join the Madrid System, it will be possible for trademark owners to broaden the reach of their existing International Trademarks to cover these new countries.

Please contact us if you are interested in extending protecting of your International Trademark to the new member countries or if you have any questions regarding the Madrid System for protecting international trademarks.