WIPO – International Registrations Containing a Designation of Canada: Communications by the Canadian Intellectual Property Office (CIPO)

The Canadian Intellectual Property Office (CIPO) has provided information to WIPO on the communication procedures followed by CIPO in respect of international registrations designating Canada.

Madrid Protocol Concerning the International Registration of Marks

International Registrations Containing a Designation of Canada: Communications by the Canadian Intellectual Property Office (CIPO)

1.           The Canadian Intellectual Property Office (CIPO) has provided information to the International Bureau of the World Intellectual Property Organization (WIPO) on the communication procedures followed by CIPO in respect of international registrations designating Canada.

2.           Holders can communicate directly with CIPO, including the exchange of communications between holders and CIPO following a notification of provisional refusal, as holders are not required to appoint a Canadian trademark agent to represent them before CIPO.

3.           However, holders who wish to be represented before CIPO must, in accordance with Canada’s Trademarks Regulations, appoint a Canadian trademark agent. CIPO can only communicate with a representative appointed before the International Bureau of WIPO if this person is a Canadian trademark agent.

4.           After the International Bureau of WIPO has notified CIPO of a designation of Canada in an international registration, CIPO will send a courtesy letter to the representative appointed before the International Bureau of WIPO. The purpose of this letter is to inform them that, should CIPO later issue a provisional refusal, any response to this notification would need to be made within the given time limit either by the holder or by a Canadian trademark agent representing the holder before CIPO.

5.           CIPO will send to the International Bureau of WIPO all the communications required under the Madrid Protocol and the Regulations under the Madrid Protocol where Canada is designated in international registrations. More precisely, CIPO will send to the International Bureau of WIPO all communications under Rules 17, 18ter and 19 of the Regulations under the Madrid Protocol, such as, statements of grant of protection, notifications of provisional refusal, statements concerning final or further decisions and notifications of invalidation.

6.           Upon receipt of such communications from CIPO, the International Bureau of WIPO will transmit a copy of them to the holder or to the representative appointed before the International Bureau of WIPO, if any. As a courtesy, CIPO will also send copies of these communications directly to the holder or to the Canadian trademark agent appointed to represent them before CIPO.

7.           In addition to those communications mentioned above, CIPO will send all other communications only to the holder or to the Canadian trademark agent appointed to represent the holder before CIPO. These communications could be, for example, notices of approval or default, acknowledgments of renewal of an international registration or renewal certificates.

8.           For further information, holders of international registrations may refer to the CIPO website available at www.cipo.gc.ca

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