The Canadian Intellectual Property Office (CIPO) started accepting Madrid Protocol trademark registrations designating Canada less than 2 years ago, but Canada has already become a top destination for such filings. That’s both good and bad news.CIPO began accepting inbound Madrid registrations on 17 June 2019 upon coming into force (CIF) of extensive amendments to the Trademarks Act, RSC 1985 c. T-13 (TMA).
According to my 29-Apr-2021 search of the WIPO IP Statistics Data Center (see partial results tabulated below—click to enlarge the table), Canada is currently in 4th place worldwide—behind only the UK, USA and China—in terms of the number of 2021 Madrid filings designating Canada. (This disregards the European Union Intellectual Property Office, which encompasses 27 countries.)
In 2020 Canada was in 3rd place—behind only the USA and China.
Who is doing all of these Madrid filings designating Canada? You can’t answer that question via CIPO’s online trademark database. To answer the question one must work with CIPO’s trademark .xml data.
It is relatively straightforward to query a database1 containing details of all 1,782,294 marks in the Canadian trademark system (as of 26-Apr-2021) to obtain an ordered list of the top filers of Madrid Protocol applications designating Canada since CIF. The table below shows the first few rows returned by the query. For comparison, I structured the query to include each filer’s post-CIF non-Madrid filings, as seen in the table’s rightmost column. Click to enlarge the table.
The next table shows the first few rows of the same result set, ordered by the post-CIF non-Madrid filings column, thus revealing filers who are clearly familiar with the Madrid process but pursue the national (i.e. non-Madrid) filing route in many cases. Click to enlarge the table.
The next table shows the the first few rows returned by another query of the same database to reveal top filers of Madrid Protocol applications designating Canada, who have not filed any post-CIF non-Madrid (i.e. national) applications. These applicants used the Madrid route for all of their post-CIF Canadian trademark filings. Note that the query returned 17,968 rows; meaning that 17,968 applicants chose the Madrid route exclusively over the national (i.e. non-Madrid) filing route. Collectively, those applicants filed 28,028 Madrid applications designating Canada. That’s a whopping 84.3% of CIPO’s 33,251 inbound Madrid filings as of 26-Apr-2021. Click to enlarge the table.
So why is Canada’s popularity as a Madrid filing destination bad news? Because CIPO is struggling to keep up with the volume of inbound Madrid applications, thus significantly delaying prosecution of national (i.e. non-Madrid) applications, as explained in my CIPO’s examination backlog—the Madrid effect post.
