You Got No Mail: Foreign Representatives Will Not Get Communications from CIPO on WIPO Applications

Arent Fox
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Arent Fox

After its recent adoption of the Madrid Protocol, Canada’s Intellectual Property Office will send communications about applications filed under the Madrid Protocol to the applicant or an appointed Canadian trademark agent, not to an applicant’s foreign representative.
 

Canada recently became a member of the Madrid Protocol, allowing applicants to apply to extend their trademark protection into Canada through the International Bureau of the World Intellectual Property Organization (WIPO). On the same day, the Canadian Intellectual Property Office (CIPO) set forth some new Trademark Regulations for this new application process. One regulation is of particular note to applicants who use a non-Canadian (foreign) representative.

If a foreign representative is identified in this application, then CIPO will send a “courtesy letter” to inform the representative that all future correspondence during the application process will be sent only to the applicant or an appointed Canadian trademark agent. After this letter, the foreign representative will receive no further correspondence from CIPO on the application’s status.

CIPO will send a few notices to WIPO, such as Statements of Grant of Protection and both Total Provisional Refusals and Confirmations of Total Provisional Refusals. But CIPO will not send several critical communications to either WIPO or the foreign representative, including any Examiner’s Reports and Notices of Approval, Default, or Refusal. Without these notices, a foreign representatives will be unaware of any pending deadlines to respond or appeal, thus risking the entire application. And they will not be able to find these notices through WIPO.

As a result, applicants and foreign representatives need to decide if they want to have the applicant forward all CIPO communications to the representative or hire a Canadian agent to do so. Representatives may not want to rely on the applicant remembering or having the time to forward all CIPO mail to them. Some applicants may be willing to set up an automatic forwarding of these emails through their email services. Other applicants may find dealing with the emails a hassle that they wanted to avoid when they hired representation and so choose to pay for a Canadian agent. Either way, an applicant’s representative should not expect any CIPO mail coming directly to them.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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