Important News for Trademark Counsel Outside Canada

Unless Canadian trademark counsel is appointed, CIPO will communicate directly to the applicant after its initial courtesy letter.

Now that Canada has implemented changes required by the Madrid Protocol, Canada can be selected as a designated country in an international trademark application.

After the Canadian application request is received by the Canada Intellectual Property Office (CIPO), and a single courtesy letter acknowledging receipt is sent, all future correspondence will be sent directly to the entity listed as the applicant on the application. The trademark counsel who submitted the territorial request, unless a Canadian trademark agent, will not receive copies of CIPO correspondence.

This is concerning because the applicant may not fully appreciate the importance or the time sensitivity of a communication from CIPO.

Even though the Canadian Trademark Regulations permit an applicant to be self-represented, it is advisable to appoint a Canadian trademark agent before the Canadian designation is requested or after CIPO’s initial courtesy letter is sent to the foreign representative.

A Canadian trademark agent will ensure that all correspondence from CIPO, and potentially third parties, is received and addressed in advance of the deadlines.

Contact the Law Office of Nadine D'Aguiar for further information.