LEGAL AND TECHNICAL IMPLICATIONS OF CANADIAN ADHERENCE TO THE MADRID PROTOCOL

Canadian Law and Practice

In accordance with ss.8 to 10 CTMR, trademark applications may be prosecuted by the applicant or a registered trademark agent appointed by the applicant. Where an appointed agent is not a resident of Canada, that agent must appoint an associate agent who resides in Canada. The CTMO will then correspond only with the associate agent.

Paris Convention, NAFTA IP Chapter, TRIPS Agreement

Nothing in the Paris Convention, the NAFTA IP Chapter or the TRIPS Agreement would prevent a contracting party from requiring trademark applicants to appoint a local agent in that contracting party.

Article 2(3) Paris Convention, Article 1703(3) NAFTA and Article 3 TRIPS all allow a contracting party to make an exception to national treatment in respect of the appointment of agents. This means that countries are free to require foreign applicants to appoint a local agent without at the same time imposing such a requirement on domestic applicants.

NAFTA Chapter on Cross-Border Trade in Services

Article 1205 of the NAFTA prohibits local presence requirements but Canada has made a permanent reservation to this Article in respect of its current treatment of trademark agents as is permitted under Article 1206 of the NAFTA. Article 1210(3) of the NAFTA prohibits any citizenship or permanent residency requirement for the licensing or certification of professional service providers. The NAFTA, however, makes a distinction between the term "permanent resident" as used in Article 1210(3) and the term "resident" which is used in both Article 1205 and the Canadian reservations made with respect to trademark agents. Accordingly, the NAFTA does not require any change to the current residency requirements for trademark agents as established under the Trade-marks Act.

TLT

Article 4(1) provides: "Any Contracting Party may require that any person appointed as representative for the purposes of any procedure before its Office be a representative admitted to practice before the Office."

Protocol

Rule 3(1)(a) of the Madrid Regulations provides that an applicant or the holder of an international application "may have a representative before the International Bureau". The only limitation on who can be appointed as a representative before the IB is that the representative must have an address complying with the requirements of Rule 3(1)(b). Rule 3(1)(b)(ii) specifies that the address of that representative shall be "in respect of an international application governed exclusively by the Protocol, in the territory of a Contracting Party bound by the Protocol". Rule 3(1)(b)(iv) specifies that the address of that representative shall be "in respect of an international registration, in the territory of a Contracting Party" (meaning in the territory of a contracting party to either the Agreement or the Protocol irrespective of which instrument governed the original international application).

With respect to representation before the office of origin or the office of a designated contracting party, paragraph 09.02 of WIPO's Guide to the International Registration of Marks states:

"References in the Regulations or in this Guide to representation relate only to representation before the International Bureau. The questions of the need for a representative before the Office of origin or the Office of a designated Contracting Party (for example, in the event of a refusal of protection issued by such an Office), of who may act as a representative in such cases and of the method of appointment in such cases, are outside the scope of the Agreement, Protocol and Regulations and are governed by the law and practice of the Contracting Party concerned."

Rule 17(2)(vii) of the Madrid Regulations allows a contracting party to require in a refusal that any request for review of, any appeal against, or any response to, the refusal has to be filed through the intermediary of a representative whose address is within the territory of that contracting party.