LEGAL AND TECHNICAL IMPLICATIONS OF CANADIAN ADHERENCE TO THE MADRID PROTOCOL

1. IB Notification to CTMO of Designations of Canada

Where Canada was designated at the time an international registration was effected, the IB would in accordance with Article 3(4) of the Protocol notify the international registration to the CTMO without delay after the registration is effected.

Where Canada was designated subsequent to the international registration, the IB would in accordance with Article 3^ter(2) of the Protocol notify to the CTMO the recordal of the request for territorial extension to Canada (i.e., the subsequent designation of Canada) without delay after the recordal.

2. Potential Effective Delay in Notification

There will normally be a time delay (and in some cases a significant time delay) between the effective date of a designation of Canada and the date on which the IB notifies this to the CTMO. This is due to the following factors.

First, the international registration will generally bear a date up to two months earlier than the date on which the registration is actually effected in view of the following provisions in Article 3(4) of the Protocol:

"The International Bureau shall register immediately the marks filed in accordance with Article 2. The international registration shall bear the date on which the international application was received in the Office of origin, provided that the international application has been received by the International Bureau within a period of two months from that date. If the international application has not been received within that period, the international registration shall bear the date on which the said international application was received by the International Bureau."

Similarly, although under Article 3^ter(2) of the Protocol a subsequent designation is effective only from the date on which it has been recorded in the International Register, in accordance with Rule 24(6) of the Madrid Regulations the recordal date is the earlier of the date of receipt by the IB and the date of receipt by an office if the designation is received by the IB within two months from that date.

In addition, where communications of international applications and subsequent designations are delayed by irregularities in postal or delivery services, Rule 5(4) of the Madrid Regulations could excuse a six month delay beyond the two month period allowed under Article 3(4) or Rule 24(6).

3. Implications of Effective Delay in Notification

Consideration will need to be given to what the implications for the CTMO and the Canadian public would be of the time delay that would normally occur between the effective date of a designation of Canada and the date on which the IB notifies this to the CTMO.

The fact that Rule 5(4) of the Madrid Regulations could excuse up to a sixth month delay where communications are delayed by irregularities in postal or delivery services can probably be largely ignored since such cases would presumably occur only very rarely.

The CTMO has in the past had, at least in theory, a general policy to wait at least six months from the earlier of the date of first use, the date of making known and the filing and priority dates of an application before advertising in the Trade-marks Journal in order to be sure that potential conflicts with later filed applications claiming priority had been considered. In practice the CTMO seldom needed to focus on this question since it has normally taken at least 6 months to process an application to the point of advertisement. Currently the only applications in the CTMO that might be ready for advertisement within six months of filing are applications subject to a special order for advanced prosecution; where they are ready, the CTMO has been letting these applications proceed to advertisement within the six month period on the basis that earlier conflicting priority applications would be infrequent and any resulting problems could be resolved by the courts.

If Canada adhered to the Protocol and it was to decide that it wished to be sure that potential conflicts with later filed applications claiming priority had been considered, it would need to ensure that advertisement of a mark not take place until about eight or nine months after the filing date, i.e., the six month priority period and an additional two to three months to provide time for the receipt from the IB of notifications of pertinent Canadian designations under the Protocol (bearing in mind the backdating that takes place under Article 3(4) of the Protocol and Rule 24(6) of the Madrid Regulations). Even this would not take account of the fact that Rule 5(4) of the Madrid Regulations could excuse up to a sixth month delay where communications are delayed by irregularities in postal or delivery services but, as noted above, this potential occurrence can probably be largely ignored since such cases would presumably occur only very rarely.

4. Effect of International Registrations in Canada

Article 4(1)(a) of the Protocol provides: "From the date of the registration or recordal effected in accordance with the provisions of Articles 3 and 3^ter, the protection of the mark in each of the Contracting Parties concerned shall be the same as if the mark had been deposited direct with the Office of that Contracting Party. If no refusal has been notified to the IB in accordance with Article 5(1) and (2) or if a refusal notified in accordance with the said Article has been withdrawn subsequently, the protection of the mark in the Contracting Party concerned shall, as from the said date, be the same as if the mark had been registered by the Office of that Contracting Party."

The first sentence of Article 4(1)(a) of the Protocol would be satisfied under Canadian law by deeming the international registration or recordal date to be the date of filing of the application in Canada.

On a first reading, one might conclude that the second sentence of Article 4(1)(a) of the Protocol would require that the remedies that are available for infringement (e.g. damages, accounting of profits) be available effective from the international registration or recordal date instead of from the actual date of registration of the trademark in Canada as would currently be the case under the CTMA. It appears, however, that the availability of remedies is an issue that is outside the scope of the subject matter covered by the Protocol and that each contracting party is therefore free to decide how it should be dealt with.

It would seem that the spirit of Article 4(1) of the Protocol is that the holder of an international registration designating country X should be in a no less favourable position than a person who had, on the date of designation of country X, filed a national application there; if there is no refusal within the prescribed period, or if any such refusal is withdrawn, the holder should be in a no less favourable position than the owner of a registration resulting from the national application. This intention that at least equal treatment be provided would, in the Canadian context, appear to be satisfied if remedies for infringement were only to be available at the end of the period for refusal.

In paragraphs 330 and 334 of the Main Committee Summary Minutes at the Diplomatic Conference on the Protocol, the Director General of WIPO stated that, with respect to the second sentence of Article 4(1)(a), an international registration would have a deposit effect until it was known whether the registration was affected by a refusal, and that it had to be clear that once any doubt as to the validity of a registration in a designated contracting party had been lifted, the registration effect in that contracting party was equivalent to a national registration made on the date of the international registration.

In an article by Gerd Kunze, The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 82 TMR 58, it is stated at page 68:

"New provisions were made in Article 4 with respect to the effect of the international registration. To avoid future difficulties in interpreting the provision, it was clearly stated that the international trademark registration has the effect of a national registration only in those cases in which the international office was not notified of a refusal of protection according to Article 5 or, in the case of such a refusal, the refusal had subsequently been withdrawn. This should make it perfectly clear that the international trademark registration cannot serve as a basis for an action for trademark infringement prior to the conclusion of the procedure."

5. Time Limits For Refusals

Article 5(1) of the Protocol gives each contracting party "the right to declare in a notification of refusal that protection cannot be granted in the said Contracting Party to the mark which is the subject of such extension."

[It should be noted that, on the subject of refusals, the Madrid Regulations sometimes use slightly different terminology than the Protocol. In particular, it may be noted that Rule 1(xix) of the Madrid Regulations defines the term "notification of provisional refusal" to mean "a declaration by the Office of a Contracting Party, in accordance with ... Article 5(1) of the Protocol".]

Article 5(2)(a) of the Protocol provides that "[a]ny Office wishing to exercise such right shall notify its refusal to the International Bureau, together with a statement of all grounds, ... before the expiry of one year from the date on which the notification of the extension referred to in paragraph (1) has been sent to that Office by the International Bureau." Article 5(2)(b) of the Protocol allows a contracting party to change the one year time limit to 18 months and Canada would no doubt make use of this option if it were to adhere to the Protocol.

To comply with Article 5(2)(a) and (b) of the Protocol, the Examination Branch CTMO would have to notify the IB of any refusal together with all the possible grounds of refusal within 18 months after the CTMO has been sent a notification of the international application by the IB. The CTMO could withdraw any such refusal at any time before or after the expiry of the 18 month period; however, no new grounds of refusal could be raised by the Examination Branch after the expiry of the 18 month period.

Although the Examination Branch would normally probably wish to raise all ex officio (i.e. examination-stage) grounds of refusal in a single notification, it would be permissible under the Protocol to raise additional ex officio grounds of refusal in separate notifications provided that all such notifications were issued within the 18 month time period.

Article 5(2)(c) of the Protocol provides that contracting parties may also declare that where a refusal of protection may result from an opposition such a refusal may be notified by the contracting party to the IB after the 18-month period. Where such a declaration has been made (as would no doubt be the case for Canada if it adhered to the Protocol), Article 5(2)(c) then provides: "Such an Office may, with respect to any given international registration, notify a refusal of protection after the expiry of the 18-month time limit, but only if:

(i) it has, before the expiry of the 18-month time limit, informed the International Bureau of the possibility that oppositions may be filed after the expiry of the 18-month time limit, and

(ii) the notification of the refusal based on an opposition is made within a time limit of not more than seven months from the date on which the opposition period begins; if the opposition period expires before this time limit of seven months, the notification must be made within a time limit of one month from the expiry of the opposition period."

Rule 16(1) of the Madrid Regulations requires a communication under Article 5(2)(c)(i) to include the number, and the name of the holder of the international registration in respect of which oppositions may be filed after the expiry of the 18-month time limit as well as, where known, the dates on which the opposition period begins and ends. Rule 16(1)(b) of the Madrid Regulations requires that where the opposition dates are not known at the time of the Article 5(2)(c)(i) communication, they must be communicated at the latest at the same time as any notification of a provisional refusal based on an opposition. The following explanation of Rule 16(1)(b) is given in paragraph 9 of WIPO document MM\WG\2\4 dated April 11, 2001:

"The information about the start and end dates of the opposition period is required solely in order for the International Bureau to be able to check that the requirements of Article 5(2)(c)(ii) have been met. In practice therefore, where an Office has been unable to include this information in the communication under subparagraph (a) [i.e the Article 5(2)(c)(i) communication], it may send it only in the case where an opposition has actually been filed."

In order to comply with Article 5(2)(c) of the Protocol and Rule 16(1) of the Madrid Regulations in respect of a given international registration, the CTMO would be required to:

1) notify the IB before the expiry of the 18 month period (i.e. within 18 months after the IB notification to the CTMO of the international registration or recordal) that oppositions may be filed after the 18-month period and inform the IB of the number, and the name of the holder, of that international registration;

2) provide the IB with the dates on which the opposition period begins and ends, either at the time of the notification referred to in subparagraph 1) above or at the latest at the same time as any notification of a provisional refusal based on an opposition( In Canada, the opposition period would begin on the advertisement of the application in the Trade-marks Journal and end two months thereafter in accordance with subsection 38(1) CTMA unless an extension of this time period was granted under section 47 CTMA.); and

3) notify the IB of the grounds of refusal raised in the opposition before the earlier of seven months from the date of advertisement of the application and one month from the expiry of the opposition period.

With respect to the first requirement (i.e. to notify the IB before the expiry of the 18 month period that oppositions may be filed after the 18-month period), this notice could in some cases be sent together with any provisional refusal notified to the IB at the examination stage. It is however not intended that such notices be routinely sent with all examination-stage provisional refusals but rather only where applicable in respect of particular applications. Rule 16(1)(a) of the Madrid Regulations requires that information about possible late oppositions shall be given "where it has become apparent with regard to a given international registration designating that Contracting Party that the opposition period will expire too late for any provisional refusal to be based on an opposition to be notified to the International Bureau within the 18-month time limit referred to in Article 5(2)(b)". In the Canadian context (and bearing in mind s.39(3) CTMA), it would seem that this would only be apparent in one of the two following situations:

1)where a given application has been approved for advertisement before the 18-month time limit but sufficiently close to that time limit so that, taking into account whatever extensions of time for filing oppositions may be permitted [as discussed below, the maximum length of extensions of time for filing oppositions would need to be limited], it is possible that the opposition period may end only after the end of the 18-month time limit; or

2) where a given application has been pending for a sufficient number of months (possibly 14 or 15 months) without approval that there is no longer any possibility of the mark being registered before the expiry of the 18 month time limit.

With respect to the second requirement (i.e. to provide the IB with the dates on which the opposition period begins and ends), the CTMO would probably only wish to provide this information if, and at the same time as, it makes any notification of a provisional refusal based on an opposition. One important reason for this is that, under the current CTMA (bearing in mind particularly the possibilities of withdrawals from allowance under s.39(3) CTMA and retroactive extensions of time under s.47(2) CTMA), the CTMO would not be in a position to identify end dates of opposition periods with any certainty until after registration. As noted in the following paragraph, Canadian adherence to Madrid would require some limitations on the granting of extensions of time to file statements of opposition and possibly some changes to s.39(3) CTMA but those changes may not completely eliminate all potential problems in identifying end dates of opposition periods.

With respect to the third requirement (i.e. to notify the IB of the grounds of refusal raised in the opposition before the earlier of seven months from the date of advertisement of the application and one month from the expiry of the opposition period), in practice this means that extensions of time for filing statements of opposition would have to be limited to a total of three or four months beyond the initial two month period provided under s.38(1) CTMA and the CTMO would have to put in place a very tight system for monitoring the filing of statements of opposition in order to ensure that the IB is notified of the grounds of refusal within the seven month period following the date of advertisement. It is to be noted that these grounds of refusal need be provisional only and could be withdrawn at any time but no new grounds of opposition could be raised more than seven months after the date of advertisement. The Trade-marks Opposition Board would thus not be able to keep its current discretion to authorize new grounds of opposition to be added at a later stage. S.39(3) CTMA might also need modification since it would not be possible to withdraw an application from allowance to consider a missed request for an extension of time to file a statement of opposition more than seven months after the date of advertisement; as well, a withdrawal from allowance would probably not be possible once the IB has been notified that the opposition period expired without an opposition having been filed. In addition, some restrictions would need to apply in respect of the grant under subsection 47(2) CTMA of retroactive extensions of time to file a statement of opposition.

Under Article 5(5) of the Protocol, if the CTMO failed to notify a provisional or final refusal within the specified time limits, the CTMO would lose its right (at both the examination and the opposition stage) to object to the request for the extension of protection of the international registration to Canada. This would not however affect the ability of Canadian courts to later invalidate the effects of the international registration in Canada for any reason.

6. Grounds of Refusal

Article 5(1) of the Protocol provides: "...Any such refusal can be based only on the grounds which would apply, under the Paris Convention for the Protection of Industrial Property, in the case of a mark deposited direct with the Office which notifies the refusal. However, protection may not be refused, even partially, by reason only that the applicable legislation would permit registration only in a limited number of classes or for a limited number of goods or services."

The key provision in the Paris Convention having an effect on the grounds of refusal that are potentially available is Article 6^quinquies which provides that trademarks duly registered in the country of origin may be refused protection only on the following grounds:

"1. when they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed;

2. when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bone fide and established practices of the trade of the country where protection is claimed;

3. when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order."

Article 6^quinquies B also provides that the above is subject to the application of Article 10^bis, meaning that protection may be refused if registration of the mark would be contrary to honest practices in industrial or commercial matters.

Although on its face, Article 6^quinquies appears to be very far reaching, it has traditionally been accepted to have application only to requirements relating to the form of the mark and not to any other requirements such as requirements relating to use. In this regard, reference may be made to Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property at page 110 where it is stated:

"Whenever a trademark is duly registered in the country of origin, the other countries of the Union are obliged to accept and protect it, even if, as regards its form, that is, with regard to the signs of which it is composed, such trademark does not comply with the requirements of the domestic legislation, subject to the additional rules, particularly the grounds for refusal or invalidation of any mark, considered on its individual merits, established by the Article. This rule will therefore apply to trademarks consisting of numbers, letters, surnames, geographical names, words written or not written in a certain language or script, and other signs of which the trademark is composed.

The member States are, however, not obliged to interpret the notion of a trademark in a manner which differs from that of their national legislation. If therefore a three-dimensional object as such, or a "signature tune," is registered as a trademark in the country of origin but is not considered a "trademark" in another country, this latter country is not obliged to register and protect these subjects. Member States are equally free, regardless of Article 6^quinquies, to apply to trademark applications other provisions of their domestic law not concerning the signs of which a trademark is composed, such as a requirement of previous use of the mark, or the condition that the applicant must possess an industrial or commercial enterprise."

This view that Article 6^quinquies of the Paris Convention concerns only the form of the mark was accepted in a January 2, 2002 report of the Appellate Body of the World Trade Organization in United States - Section 211 Omnibus Appropriations Act of 1998, AB-2001-7.

Under the Canadian Trade-marks Act, there are a number of requirements concerning the signs of which a mark is composed, such as those found in section 12 of the Canadian Trade-marks Act. All of these, however, appear to be easily justifiable as falling within one of the exceptions allowed under Article 6^quinquies of the Paris Convention. Accordingly, it would appear that neither the incorporation of Article 6^quinquies of the Paris Convention through Article 5(1) of the Protocol nor anything else in the Protocol would prevent the CTMO from raising any ground of refusal that is currently available as a ground of refusal under the CTMA. However, under the Protocol and the Madrid Regulations as they currently stand, it could be impractical to raise certain grounds of refusal . Further, a number of constraints would also be created if Canada were to adhere to the TLT. [Detailed discussion of these issues is found below in Parts IV, V and VI.]

7. Contents of Notifications of Provisional Refusal

Rules 17(1), (2) and (3) of the Madrid Regulations set forth what must be contained in notifications of provisional refusal:

"(1) [Notification of Provisional Refusal] (a) A notification of provisional refusal may comprise a declaration stating the grounds on which the Office making the notification considers that protection cannot be granted in the Contracting Party concerned ("ex officio provisional refusal) or a declaration that protection cannot be granted in the Contracting Party concerned because an opposition has been filed ("provisional refusal based on an opposition") or both.

(b) A notification of provisional refusal shall relate to one international registration, shall be dated and shall be signed by the Office making it.

(2) [Contents of the Notification] A notification of provisional refusal shall contain or indicate

(i) the Office making the notification,

(ii) the number of the international registration, preferably accompanied by other indications enabling the identity of the international registration to be confirmed, such as the verbal elements of the mark or the basic application or basic registration number,

(iii) [Deleted]

(iv) all the grounds on which the provisional refusal is based together with a reference to the corresponding essential provisions of the law,

(v) where the grounds on which the provisional refusal is based relate to a mark which has been the subject of an application or registration and with which the mark that is the subject of the international registration appears to be in conflict, the filing date and number, the priority date (if any), the registration date and number (if available), the name and address of the owner, and a reproduction, of the former mark, together with the list of all or the relevant goods and services in the application or registration of the former mark, it being understood that the said list may be in the language of the said application or registration,

(vi) either that the grounds on which the provisional refusal is based affect all the goods and services or an indication of the goods and services which are affected, or are not affected, by the provisional refusal,

(vii) the time limit, reasonable under the circumstances, for filing a request for review of, or appeal against, the ex officio refusal or the provisional refusal based on an opposition and, as the case may be, for filing a response to the opposition, preferably with an indication of the date on which the said time limit expires, and the authority with which such request for review, appeal or response should be filed, with the indication, where applicable, that the request for review, the appeal or the response has to be filed through the intermediary of a representative whose address is within the territory of the Contracting Party whose Office has pronounced the refusal.

(3) [Additional Requirements Concerning a Notification of Provisional Refusal Based on an Opposition] Where the provisional refusal of protection is based on an opposition, or on an opposition and other grounds, the notification shall, in addition to complying with the requirements referred to in paragraph (2), contain an indication of that fact and the name and address of the opponent..."

Rule 18 of the Madrid Regulations sets out the consequences, and the process to be followed, for irregular notifications of provisional refusal.

8. Confirmation or Withdrawal of Provisional Refusal

Rule 17(5) of the Madrid Regulations provides:

"[Confirmation or Withdrawal of Provisional Refusal] (a) An Office which has sent to the International Bureau a notification of provisional refusal shall, once all procedures before the said Office relating to the protection of the mark have been completed, send to the International Bureau a statement indicating either

(i) that protection of the mark is refused in the Contracting Party concerned for all goods and services:

(ii) that the mark is protected in the Contracting Party concerned for all goods and services requested, or

(iii) the goods and services for which the mark is protected in the Contracting Party concerned.

(b) Where, following the sending of a statement in accordance with subparagraph (a), a further decision affects the protection of the mark, the Office shall, to the extent it is aware of that decision, send to the International Bureau a further statement indicating the goods and services for which the mark is protected in the Contracting Party concerned."

Rule 17(5) of the Madrid Regulations is a new provision that was approved by a WIPO Working Group at a meeting in June 2001. In paragraph 40 of the official report (WIPO document MM/WW/2/6) of that meeting, it is stated in relation to Rule 17(5):

"Summarizing the discussion, the Chair noted that there was a consensus that Offices should send information to the International Bureau once a situation had been reached where what was in practice likely to be a final decision had been taken. It was up to each Office to decide when this stage had been reached and in particular to determine whether the proceedings of a Trial and Appeal Board amounted to "procedures before the Office.""

The intention here would appear to be to give contracting parties flexibility to exclude (for the purposes of determining under Rule 17(5)(a) when all procedures before the office have been completed) procedures before opposition boards that are legally constituted external to the trademark office. In the current Canadian context, it appears clear that proceedings before the Trade-marks Opposition Board should be treated as being included in "procedures before the Office" (bearing in mind that, under the CTMA, actions of both the CTMO at the examination stage and the Board at the opposition stage are legally actions of the Registrar of Trade-marks)and the following analysis proceeds on that assumption.

In order to comply with Rule 17(5)(a) of the Madrid Regulations, whenever the CTMO sent a notification of provisional refusal, whether on the basis of an office action or on grounds raised in an opposition, the CTMO would subsequently need to inform the IB of the decision that terminated procedures before the CTMO. In the context of an international registration designating Canada, the decision that would terminate procedures before the CTMO would be either 1) a decision to refuse the protection of the mark in Canada for all requested goods and services; 2) a decision to grant the protection of the mark in Canada in respect of all requested goods and services; or 3) a decision to grant the protection of the mark in Canada in respect of some but not all of the requested goods and services. These decisions would ordinarily (i.e. ignoring the possibility of a court ordering a procedure to be re-started) correspond, respectively, to the following decisions under the existing Canadian national procedures: 1) a decision to refuse an application under s.37(1) or s.38(8) CTMA in respect of all the wares and services covered by the application [This would normally be a decision of the Registrar of Trade-marks but, bearing in mind s.39(1) CTMA, it could effectively also be a court decision overturning the rejection of an opposition by the Registrar of Trade-marks]; 2) the registration of a trademark in accordance with s.40 CTMA in respect of all of the wares and services covered by the application; or 3)the registration of a trademark in accordance with s.40 CTMA in respect of some of the wares and services covered by the application as initially filed [This could happen as a result of a voluntary amendment by the applicant to limit the list of wares and services or following a decision to refuse the application under s.37(1) or s.38(8) in respect of the some of the wares and services covered by the application].

The latter mentioned situation of a refusal for some wares and services followed by a registration for the remaining wares and services is not explicitly provided for in the CTMA; however, there has been a long-standing practice of the Trade-marks Opposition Board to make split decisions of this nature under s.38(8) CTMA and this practice appears to have been accepted by the Federal Court (See Produits Menagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf Gmbh (1986), 10 C.P.R. (3d) 482). Should Canada decide to adhere to the Protocol, some consideration should be given to amending the CTMA to explicitly set out what, if anything, is acceptable in terms of split decisions. Consideration in this regard should also take into account the requirements of TLT Article 7 in accordance with which applicants must be permitted to divide applications by distributing among one or more divisional applications (all having the same filing date and any right of priority) the goods and/or services listed in the initial application.

In order to comply with Rule 17(5)(b) of the Madrid Regulations, the CTMO would need to advise the IB of any decisions of the Federal Court or the Supreme Court of Canada that were made after a decision terminating procedures before the CTMO in respect of an international registration designating Canada and that affected the protection of the mark. This would primarily seem to cover the equivalent of court decisions based on appeals of decisions to refuse an application under s.37(1) or 38(8) CTMA. Court decisions upholding, on appeal, decisions by the Registrar of Trade-marks under s.38(8)CTMA to reject an opposition would not appear to need to be notified since they would precede the decision (i.e. registration) terminating procedures before the CTMO. As discussed above, court decisions overturning decisions by the Registrar of Trade-marks under s.38(8)CTMA to reject an opposition would appear to require notification pursuant to Rule 17(5)(a)(i) of the Madrid Regulations since in view of s.39(1) CTMA they would effectively terminate procedures before the office. Court decisions invalidating the effects of an international registration in Canada (the equivalent of the expungement of a trademark registration pursuant to s.57 CTMA) would arguably also in some circumstances fall within the scope of Rule 17(5)(b) of the Madrid Regulations but this would be of no significance since as discussed below under the heading "Invalidation in Canada of Effects of International Registration" Protocol Article 5(6) in any event requires all invalidations to be notified to the IB.

In order for the CTMO to obtain the information necessary to permit notifications of the equivalent of court decisions based on appeals of decisions to refuse an application under s.37(1) or 38(8) CTMA, it would be important to ensure that s.61 CTMA (which requires the Registry of the Federal Court to file with the Registrar of Trade-marks a copy of every judgment or order made by the Federal Court or by the Supreme Court of Canada relating to any trademark on the register) applied to such decisions.

9. Statement of Grant of Protection Where No Provisional Refusal

Where the office of a designated contracting party decides that it is not going to refuse protection to an international registration or a subsequent designation, the mark will be automatically protected in that contracting party at the end of the time limit for refusal that applies in accordance with Article 5(2) of the Protocol. There is therefore no requirement for an office to issue any notification when it decides that it is not going to refuse protection. Rule 17(6) of the Madrid Regulations does, however, provide an optional procedure allowing an office, once it has made a decision not to refuse protection, to send to the IB a statement of grant of protection, which will be recorded in the International Register, published in the Gazette and transmitted by the IB to the holder.

In particular, Rule 17(6) of the Madrid Regulations would permit an office to send to the IB any of the following:

"(i) a statement to the effect that all procedures before the Office have been completed and that the Office has decided to grant protection to the mark that is the subject of the international registration;

(ii) a statement to the effect that the ex officio examination has been completed and that the Office has found no grounds for refusal but that the protection of the mark is still subject to opposition or observations by third parties, with an indication of the date by which such oppositions may be filed;

(iii) where a statement in accordance with subparagraph (ii) has been sent, a further statement to the effect that the opposition period has expired without any opposition or observations being filed and that the Office has therefore decided to grant protection to the mark that is the subject of the international registration."

From a holder's point of view, a statement of grant of protection could be very useful in providing early notice in situations where the office makes a decision not to refuse protection well before the end of the relevant time limit for refusal and the holder would otherwise have to wait until the end of the refusal period to know whether a notification of refusal will be issued. The CTMO would therefore want to give consideration to sending a statement of grant of protection in appropriate cases. In accordance with Rule 17(6) of the Madrid Regulations, the CTMO could decide to send a statement only after all procedures before the office had been completed (i.e. at the time of registration) or it could decide to send a first statement after completion of the examination stage (i.e at approval for advertisement) together with a further statement after the opposition period had expired with no opposition having been filed (this would in practice be at registration since in view of s.39(3) CTMA it would only be at registration that the CTMO could say with any certainty that the opposition period had expired).

10.Invalidation in Canada of Effects of International Registration

The Protocol would place no restrictions on the ability of Canadian courts to invalidate for any reason the effects of an international registration in Canada. The only restriction on invalidation would be, according to Article 5(6) of the Protocol, that it "may not be pronounced without the holder of such international registration having, in good time, been afforded the opportunity of defending his rights."

Article 5(6) of the Protocol and Rule 19(1) of the Madrid Regulations would require the CTMO to notify the IB of any decision by the Federal Court or the Supreme Court of Canada to invalidate, in whole or in part, the effects in Canada of an international registration. This would be the equivalent of a decision to expunge a trademark registration in accordance with s.57 CTMA. In order for the CTMO to obtain the information necessary to permit such notifications, it would be important to ensure that s.61 CTMA applied to decisions invalidating the effects in Canada of international registrations.

11. Transformation from an International Application to a Canadian National Application

Where Canada was designated in an international application and the international registration was cancelled (in respect of some or all of the goods and services listed in the registration) at the request of the office of origin under Article 6(4) of the Protocol, Article 9^quinquies would give the holder of the cancelled international registration three months to file a replacement national application in the CTMO in respect of those goods or services for which the registration was cancelled. The CTMO would be required to accord to this national application the same filing and priority dates to which the international registration was entitled.

12. Advertisement

As noted above under the heading "Implications of Effective Delay in Notification", because of the backdating of international registrations and recordals of subsequent designations and because of the six-month priority period, the CTMO may wish (but wouldn't be required) to delay advertisement of applications, both domestically filed and internationally filed, in the Trade-marks Journal (for at least eight months from the earlier of the date of first use, the date of making known and the filing and priority dates of an application) in order to be sure that at least most potential conflicts with later international registrations claiming priority have been considered.

Article 3(4) of the Protocol provides: "Marks registered in the International Register shall be published in a periodical gazette issued by the International Bureau, on the basis of the particulars contained the international application." This periodical gazette is currently called "WIPO Gazette of International Marks" and its required contents are specified in Rule 32 of the Madrid Regulations.

Article 3(5) of the Protocol provides: "With a view to the publicity to be given to marks registered in the International Register, each Office shall receive from the International Bureau a number of copies of the said gazette free of charge and a number of copies at a reduced price, under the conditions fixed by the Assembly referred to in Article 10.... Such publicity shall be deemed to be sufficient for the purposes of all the Contracting Parties, and no other publicity may be required of the holder of the international registration."

Even though international registrations and recordals of subsequent designations would have been advertised in the WIPO Gazette of International Marks, it may nevertheless be desirable to re-advertise international registrations and recordals of subsequent designations in the Trade-marks Journal 1) to give adequate notice that the request for extension of protection to Canada may be opposed; and 2) because the listing of the wares and services may have changed after examination by the CTMO. This re-advertisement would need not necessarily include all the particulars of the international application but could instead make a reference to the publication in Les Marques Internationales together with an indication of any subsequent changes to the list of goods and services. No fee can be charged for any such re-advertisement in view of Article 3(5) of the Protocol.

13. Replacement of a Canadian Registration by an International Registration

Article 4^bis of the Protocol provides:

"(1) Where a mark that is the subject of a national or regional registration in the Office of a Contracting Party is also the subject of an international registration and both registrations stand in the name of the same person, the international registration is deemed to replace the national or regional registration, without prejudice to any rights acquired by virtue of the latter, provided that:

(i) the protection resulting from the international registration extends to the said Contracting Party under Article 3^ter(1) or (2),

(ii) all the goods and services listed in the national or regional registration are also listed in the international registration in respect of the said Contracting Party,

(iii) such extension takes effect after the date of the national or regional registration.

(2) The Office referred to in paragraph (1) shall, upon request, be required to take note in its register of the international registration."

If Canada were to adhere to the Protocol, it would appear to be appropriate to include in the Trade-marks Act a provision which would give effect to Article 4^bis of the Protocol, so that the owner of a national registration in Canada which is replaced by the designation effect of an international registration would keep the benefit of the date of the earlier national registration and could obtain a recording of that effect in the Canadian trademark register.

14. Fees

Articles 8(4),(5) and (6) of the Protocol provide for the distribution to contracting parties of the complementary and supplementary fees as well as any surplus of the basic fees after deduction of the IB's expenses. Article 8(7)(a) allows contracting parties, in connection with international registrations and renewals of international registrations, to replace their share in the revenues produced by the supplementary and complementary fees by an individual fee set by that contracting party. This individual fee "may not be higher than the equivalent of the amount which the said Contracting Party's Office would be entitled to receive for a ten-year registration, or from the holder of a registration for a ten-year renewal of that registration, of the mark in the register of the said Office, the said amount being diminished by the savings resulting from the international procedure." Canada will very likely wish to ask for individual fees.

[See also the discussion of fees above in Part II.]

15. Transitional Provision

In accordance with Article 14(5) of the Protocol, Canada could when adhering to the Protocol "declare that the protection resulting from any international registration effected under this Protocol before the date of entry into force of this Protocol with respect to it cannot be extended to it". Such a declaration could be made by Canada with permanent effect or only for a temporary period of time.

To date only three countries have made a declaration under Article 14(5): Estonia, Hungary and Turkey. One apparent difficulty with making a declaration under Article 14(5) is that it would appear to apply only to international registrations effected under the Protocol. Thus it appears to place a restriction in respect of the relatively small number of registrations effected under the Protocol since April 1996 but does not affect the hundreds of thousands of registrations made under the Madrid Agreement, whether before or after that date.