Publication date:
This notice is intended to clarify the practice before the Office of the Registrar of Trademarks (the Registrar) where registered owners may request that the Registrar take note of the replacement of a national registration by a Protocol registration.
Article 4bis of the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks (the Madrid Protocol) provides that, where a trademark that is the subject of a national registration in Canada is also the subject of Protocol registration, the national registration is, under certain conditions, deemed to be replaced by the Protocol registration of the same trademark.
The conditions under which replacement takes place are the following:
- both the national registration and the Protocol registration are in the name of the same registered owner,
- the goods and services that are subject of the replacement are listed in both the national registration and in the Protocol registration,
- the Protocol registration date is after the national registration date, and
- both the national registration and Protocol registration were active during an overlapping period.
Where the above conditions are met, the registered owner may request that the Registrar take note of the replacement and notify the International Bureau accordingly.
How to file a request
A request to take note of replacement should be submitted electronically with respect to the Protocol registration and must include the following:
- the number of the international registration concerned,
- the national registration number or the number of the application that resulted in the national registration,
- the name of the registered owner; and
- where replacement concerns only one or some of the goods or services listed in the Protocol registration, an indication of those goods or services.
In accordance with section 4 of the Trademarks Regulations, a request to take note of replacement must not relate to more than one Protocol registration however, where applicable, it may include a reference to more than one national registration.
When the Registrar Takes Note
Where the request is considered acceptable, the Registrar will take note of the replacement on both the national registration and the Protocol registration. The Registrar will notify the International Bureau that it has taken note of the replacement.
Partial replacement
Replacement may involve multiple national registrations where the goods or services are covered by a single Protocol registration or it may involve one national registration where the goods or services are covered by multiple Protocol registrations. In this latter example, the registered owner will be required to submit a request to take note of replacement on each Protocol registration.
The list of overlapping goods or services do not need to be identical in the national and Protocol registrations however the goods or services must be considered equivalent.
When the Registrar is Unable to Take Note
If the request is not considered acceptable, the Registrar will notify the registered owner explaining why the request is considered unacceptable. The following are examples of circumstances where a request would not be considered acceptable:
- the request was submitted on a Protocol application,
- the national registration and the Protocol registration are not in the name of the same registered owner,
- the trademark that is the subject of the national registration is not the same as the trademark that is the subject of the Protocol registration,
- the goods or services listed in the national registration are not also listed in the Protocol registration, or do not overlap,
- both the national registration and Protocol registration were not active during an overlapping period, for example, the Protocol registration date is after the national registration date for a request submitted during the last six (6) months of the national registration's prescribed renewal period and the national registration is not renewed before the expiry of that renewal period,
- the request relates to more than one Protocol registration contrary to section 4 of the Trademarks Regulations.
Disclaimer
This practice notice is intended to provide guidance on the Canadian Intellectual Property Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. The provisions of this practice notice are general guidelines only, are not binding in any particular case and are subject to change.