Canada - Brazil : the new members of the Madrid International Trademarks System
Canada became, on June 17, 2019 the 104th member of the Madrid System, which now covers 120 countries. It is now possible to designate Canada in an international trademark application.
Canada has also acceded to the Nice Agreement on the International Classification of Goods and Services, which has 45 classes, including 34 classes of goods and 11 classes of services.
No declaration of intent or actual use is required. However, Canadian law still protects non-registered trademarks being in use in Canada.
Brazil has approved the Madrid Protocol by a decree of May 30, 2019, and will thus join the Madrid International Trademarks System.
Brazil also adhered to the multi-class trademark application system. It will therefore be possible to file a trademark for several classes of goods and/or services, thus replacing the single-class trademark application system.
Reminder on the Madrid International Trademarks System
Requirement for application in the country of origin (basic trademark)
This system allows applicants, after their application in the country of origin (for a French citizen, a French application with the INPI), to apply for protection by selecting the countries of their choice from among the other 120 countries.
It is recommended to file the international trademark within 6 months of the first application in the country of origin in order to be able to claim priority of this basic trademark.
Countries must be designated at the time of the international trademark’s application (unlike the PCT patent filing system from which countries are subsequently chosen).
It is also possible to make additional country designations later on.
5-year dependency - Prior art searches
An international trademark is dependent on the basic trademark for a period of 5 years from its application. Therefore, it is recommended :
- to ensure the invulnerability of the basic trademark by means of prior right searches and, for this reason,
- for EU citizens, to base international trademark on a national application rather than on a European Union trademark because the risk of opposition is more significant given the number of countries.
Such research is also recommended in the countries covered by the international trademark.