14th April 2016 - ADMIN

You should start to think about registering your trademarks in other countries as you expand your brand. One way of doing this is through the the Madrid System for the International Registration of Marks.

The Madrid System applies among members of the Madrid Agreement Concerning the International Registration of Marks 1891 or the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989. 

The Madrid Protocol is a treaty between member states that provides for the international registration of trademarks and is administered by the International Bureau (IB) of the World Intellectual Property Organisation (WIPO).

It protects several trademarks in several countries by simply filing one application.

It is possible to obtain registration in some countries and be refused by others but a refusing country must provide detailed reasons and supporting documentation, and include ways in which the problem may be overcome. If no refusal is issued, the international registration will be protected in the designated country.

Australia has been a member since July 2001.

Advantages of the Madrid System

The primary advantage of the Madrid system is that it allows a trademark owner to obtain trademark protection in any or all member states by filing one application in one jurisdiction with one set of fees (application and registration fees processed in one payment), and make any changes (e.g. change of details such as address) and renew registration across all applicable jurisdictions through a single administrative process. The Madrid System has the following advantages:

• A single international application in one language (English, Spanish or French) can save costs and streamline administration (a single request is required to make changes or renew international applications).
• It is filed through the Trade Marks Office of the home country.
• Protection can be sought in one, some or all of the other member countries.
• When an international registration is granted protection in the target country, it has the same protection as a national registration in that country.
• Designation whereby protection can be extended to new jurisdictions which subsequently join Madrid, or to such other jurisdictions as the trade mark owner may choose.
• No requirement for legalisation or translation of an application.
• No need to hire local associates unless there is an objection or refusal in a particular designated country or countries.
• Priority date same as originating basic application filing date provided claimed within 6 months thereof.
• Valid for a period of 10 years commencing from the application filing date and  can be renewed for successive ten-year terms by paying a single renewal fee to WIPO.
• Assignments of the trademark rights can be recorded for all or some of the countries covered at WIPO instead of on a country-by-country basis.

 

Disadvantages of the Madrid System

The primary disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of the basic application or basic registration within 5 years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent. The Madrid System has the following disadvantages:

• Can only be obtained on the basis of a national registration in the applicant’s home country.
• Registration cannot be obtained through the system in Non-Madrid Protocol countries
• Basic trade mark must be carefully maintained as it is vulnerable to “Central Attack” – if the basic application fails registration or is challenged or opposed by a third party within 5 years of the application being filed and the opposition is successful, then all the designated countries nominated in the international application fail under the Madrid Protocol.
• No variants allowed in that the mark must be identical to the basic application in the international registration and for the same or narrower goods and services class description.
• Goods & services description cannot exceed scope of the basic application.
• Cost savings may be negated by the need to use international agents / local counsel in the applicable jurisdiction should any problems arise.
• Trade mark rights cannot be assigned to a business or potential purchaser from a non-participating country.

In sum, the Madrid system simplifies management of the mark but this should be balanced against its disadvantages. Further, protection for a mark can be refused in a designated country. Refusal may be made on any of the grounds on which an application for registration filed directed with that Trade Marks Office might be refused.

Madrid and Non-Madrid Protocol Countries

97 members covering 113 countries at date of writing

Contact w3ip on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au

 

 
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.