International Trademark Registration

International Trademark Registration

Madrid Protocol (International Trademark Registration):

The Madrid Protocol offers a cost-effective system for the international registration and maintenance of trade marks.

Under the Protocol system, an international trade mark registration is issued by the World Intellectual Property Organisation (WIPO) which has effect in all the member countries designated by the applicant, subject to the right of national offices to refuse protection in their countries. An international registration is therefore in effect a collection of national registrations all bearing the same number.

Any UK company, or any UK national, may apply if they have a UK or Community trade mark application or registration. Please note that having a home based trademark application or registration is a pre-requisite for filing.

A single application may be filed for goods and services in multiple classes and designating multiple contracting states. If the country of origin is party to both the Agreement and the Protocol then any contracting state of either may be designated.

If the country of origin is party only to one or the other of the Agreement or the Protocol then only contracting states to the Agreement or to the Protocol respectively may be designated. Thus, presently, applications filed in the UK may only designate contracting states to the Protocol.

The applicant files the IR at his national trade mark office and designates additional Protocol countries where he wishes to obtain protection.

The national trade mark office then forwards the international application to the International Bureau of WIPO. The international application will be accorded the filing date of the original application, giving the IR and the basic registration the same priority date. In the case of an IR based on an already existing national application/registration the priority date is the date in which the international application is filed (not the priority date of the original national application/registration). The Protocol also provides for extending the geographic scope of protection of an existing IR to additional countries at a later date by filing a subsequent designation.

After receiving the application or subsequent designation, WIPO examines whether the application complies with the formalities requirements, but does not examine the substance of the application (i.e. whether the mark is descriptive or it conflicts with any earlier rights). If the International Bureau is satisfied the mark is recorded in the International Register. Then the Bureau notifies the national trade mark office of each of the designated countries.

The national trade mark offices then have either 12 or 18 months (depending on the country) to examine the application under its national law. The scope of the examination varies from country to country. Once examined the mark is published for opposition purposes. If a foreign office rejects the application or if a third party opposes the mark, the application will be prosecuted as any national mark.

However, if accepted, an IR is granted for an initial period of 10 years, and may be renewed in all countries with a single renewal fee. Similarly, one notification to the International Bureau will record any change of details, assignments and licenses.

Advantages of the Madrid Protocol:

• Provides a convenient and cost-effective way of filing and maintaining trade mark rights in foreign countries.
• Central administration of a collection of national registrations
• Only the countries of actual interest need be included.
• If problems arise in one designated country, this can be dropped without affecting the others.
• Protection for some countries/regions may be obtained more quickly than by using the national route. This is because strict time limits are set under the Protocol.
• It is possible to extend an international registration to further Protocol countries after registration. An application for territorial extension (known as a subsequent designation) can be filed at any time after registration. The effective filing date of such a subsequent designation is the date the extension request reaches the national office.
• No need to appoint agents in designated countries unless problems arise
• It is possible to assign some designations and not others.
• An International Registration can replace a corresponding national/regional registration without loss of rights.
Disadvantages of the Madrid Protocol:
• An applicant (and a subsequent assignee) must have effective business establishment in, domicile in or be a national of, a contracting state. So international registrations under the Protocol could interfere with a sale of assets to an entity based in a non Protocol country.
• All fees due on filing, rather than being split between filing and grant.
• A home-based trademark application or registration is a pre-requisite for filing.
• For its first five years the International Registration is dependent on the prior application or registration upon which it is based. If the prior application does not achieve registration, or is subsequently invalidated or cancelled, partially or in its entirety, the IR is likewise entirely or partially cancelled. This is called the "central attack". Therefore, it is critical that the basic application/registration is strong. (To remedy the fatal consequences of the central attack the Madrid Protocol provides that the IR application/registration can be transformed into separate, national applications which will retain the filing date of the original application. However, this transformation is an expensive and slow exercise).
• The dependency on the prior application or registration also means that the specification of goods/services of the International Registration has to be the same as, or narrower than, the prior application or registration.
• The trade mark owner must be able to show use in each of the designated countries once the initial 5 year dependency period expires. If, the mark is not used in that country the registration will be vulnerable to be revoked in that jurisdiction.