How Canadians Can Use the Madrid Protocol to Protect Their Trademarks Internationally

For Canadian businesses and entrepreneurs seeking to expand globally, protecting their brands in foreign markets is a critical step. Fortunately, thanks to Canada's accession to the Madrid Protocol, Canadians now have access to a streamlined international trademark filing system that simplifies the process of securing trademark rights in multiple countries.

This article explains how the Madrid Protocol works, how Canadians can apply, and what you should consider before using the system to protect your trademarks abroad.

What Is the Madrid Protocol?

The Madrid Protocol, administered by the World Intellectual Property Organization (WIPO), is an international treaty that allows trademark owners to file one application, in one language, and pay one set of fees to seek protection in over 130 countries.

Rather than filing separate trademark applications in each country, Canadian trademark owners can now use the Madrid Protocol to apply for protection in multiple jurisdictions from a single centralized application through the Canadian Intellectual Property Office (CIPO).

Canada officially joined the Madrid Protocol on June 17, 2019.

Benefits of the Madrid Protocol for Canadians

The Madrid Protocol offers several advantages to Canadian applicants:

1. Simplified Process

Instead of hiring separate local representatives and navigating different filing systems, Canadians can file one international application through CIPO, designating other Madrid member countries.

2. Cost Savings

You avoid multiple filing fees, translation costs, and local agent fees typically associated with filing directly in each country.

3. Centralized Management

You can manage all your international trademark rights—including renewals, address changes, and ownership transfers—through WIPO, rather than dealing with each country's office separately.

4. Flexible Expansion

You can add more countries later as your business grows by filing a “subsequent designation” through WIPO.

Who Can Use the Madrid Protocol in Canada?

To file an international trademark application under the Madrid Protocol from Canada, you must meet basic eligibility criteria:

• Be a Canadian citizen, permanent resident, or entity with a real and effective industrial or commercial establishment in Canada;
  
  

• Own a Canadian trademark application or registration (called the "basic application" or "basic registration"); and
  
  

• Use the Canadian application or registration as the foundation for the international application.
  
  

Step-by-Step: How Canadians File Under the Madrid Protocol

Step 1: File a Canadian Trademark Application or Registration

Your starting point is a trademark application or registration in Canada. This becomes the foundation (base) for your international application.

You must ensure that:

• The goods and services listed in the international application do not exceed those in the Canadian application;
  
  

• The mark is identical in both the Canadian and international filings.
  
  

Step 2: Submit the International Application Through CIPO

Once your Canadian trademark application or registration is in place, you can file an international application through CIPO using the WIPO Madrid eFiling system. CIPO reviews the application to certify:

• The information matches your Canadian filing;
  
  

• You are eligible to use the Madrid Protocol;
  
  

• The list of goods/services is acceptable.
  
  

Step 3: CIPO Certifies and Forwards the Application to WIPO

After certification, CIPO sends your international application to WIPO in Geneva, Switzerland, for further examination and processing.

Step 4: WIPO Reviews and Registers the International Application

If the application meets WIPO’s formal requirements:

• WIPO records the trademark in the International Register;
  
  

• Issues an International Registration (IR) number;
  
  

• Publishes it in the WIPO Gazette of International Marks.
  
  

WIPO then forwards the application to the trademark offices of each designated country for substantive examination under their own national laws.

Step 5: National Examination and Decisions

Each national or regional IP office (such as the USPTO in the U.S. or EUIPO in the EU) will:

• Examine your trademark application under their domestic rules;
  
  

• Notify WIPO of any objections (called “provisional refusals”) within a certain period, usually 12–18 months.
  
  

If no refusal is issued within that time, your mark is automatically protected in that country.

Key Considerations Before Filing

1. The Basic Application or Registration Is Crucial

Your international registration is dependent on the Canadian application or registration for the first five years. If your Canadian mark is cancelled or refused during this period, the entire international registration may be invalidated.

This is known as a "central attack."

To mitigate this risk, consider ensuring your Canadian application is strong and likely to proceed to registration—or wait until your Canadian trademark is registered before filing internationally.

2. Each Country Has Its Own Rules

Even under the Madrid Protocol, each designated country will still apply its own legal standards for registrability (e.g., descriptiveness, likelihood of confusion, distinctiveness). You may still need to respond to local objections or hire local counsel.

3. Limited to Madrid Member Countries

The Madrid Protocol only allows you to designate countries that are members of the treaty. Some large economies—such as Hong Kong and South Africa—are not yet members and require separate national filings.

4. Language and Classifications

The application must be filed in English, French, or Spanish, and use the Nice Classification system for goods and services. You must ensure the descriptions are clear and acceptable in each country you designate.

Common Mistakes to Avoid

• Overly broad descriptions: If your list of goods and services is too broad or vague, it may be objected to in some countries.
  
  

• Ignoring provisional refusals: If you miss the response deadlines for refusals issued by national offices, you could lose protection in that country.
  
  

• Not planning for renewals: International registrations must be renewed every 10 years, and you must track deadlines for all designated countries.
  
  

Should You Use the Madrid Protocol or File Directly?

While the Madrid Protocol is efficient, it is not always the best route. You may want to file directly in a foreign country if:

• You have a complicated or customized filing strategy;
  
  

• The country is not a Madrid member;
  
  

• You need to register a local language version of your mark;
  
  

• Your Canadian application is not yet strong or approved.
  
  

A hybrid strategy—using the Madrid Protocol for certain countries and direct filings for others—may be the best approach.

Work with an Experienced Canadian Trademark Lawyer

Filing an international trademark application can be complex and risky if done without professional guidance. A Canadian trademark lawyer can:

• Help you prepare a strong Canadian application that serves as the base;
  
  

• Advise on which countries to designate;
  
  

• Review and edit your goods and services descriptions;
  
  

• Manage the Madrid application process with CIPO and WIPO;
  
  

• Respond to foreign objections and refusals through trusted foreign associates.
  
  

Conclusion

The Madrid Protocol is a powerful tool for Canadian businesses looking to protect their trademarks in multiple countries. With proper planning and professional support, you can expand your brand internationally with greater ease and cost-efficiency than ever before.

If you’re a Canadian business owner or brand manager considering international trademark protection, don’t leave your intellectual property vulnerable. Speak to a Canadian trademark lawyer today.

Need help with an international trademark filing?
Contact our trademark lawyer Edmund at Edmund@AlphabeticaLaw.com for a consultation and step-by-step assistance with the Madrid Protocol application from Canada.