Responding to a Madrid Provisional Refusal in Canada

Since Canada joined the Madrid Protocol in June 2019, designating Canada has become a routine part of international filing strategies. Canadian examination has its own requirements, and a provisional refusal from CIPO is common. Here's what to expect and how to respond.

When the refusal arrives

Canada has extended the period for issuing provisional refusals from 12 to 18 months. CIPO must notify WIPO within 18 months of the designation whether the mark can be protected in Canada. If the examiner has objections, CIPO issues a total provisional refusal that includes every objection in the examiner's first report.

The correspondence trap

Under Canada's Trademarks Regulations, CIPO corresponds only with the holder or a Canadian trademark agent, not with the foreign representative recorded at WIPO. The total provisional refusal goes to WIPO, which forwards it to the holder or its WIPO representative. But later notices, such as approval notices, further examiner's reports, default notices, and refusals, go only to the holder or its appointed Canadian agent.

Many foreign firms appoint a Canadian agent soon after the designation, so every notice is received and reported promptly.

The six-month deadline

The holder has six months from the total provisional refusal to respond. The response goes directly to CIPO, and not through WIPO. Holders aren't strictly required to appoint a Canadian agent and may respond themselves, but most foreign firms appoint one at this stage, since the response must address Canadian law and practice.

Common objections

• Goods and services. The most frequent issue. Canada requires goods and services in specific, ordinary commercial terms, and many descriptions accepted elsewhere need revision.

• Confusion with a prior Canadian registration or application.

• Descriptiveness or lack of inherent distinctiveness.

• Missing requirements, such as a translation or transliteration of non-Latin characters.

If the examiner maintains an objection after the response, CIPO issues a further report. If the application is ultimately refused, the holder can appeal to the Federal Court.