Madrid Protocol: Is it the Correct Choice for You?
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks - the Madrid Protocol (concluded in 1989) is one of two treaties comprising the Madrid System for international registration of trademarks. The protocol is a filing treaty and not a substantive harmonization treaty. It provides a cost-effective and efficient way for the trademark holders - individuals and businesses, to ensure protection for their trademarks in several countries through filing of one application with a single office, in one language, with one set of fees, in one currency. Furthermore, no local agent is needed to file the initial application.
Even though an international registration may be issued, it remains the right of each country or contracting party designated for protection to decide whether or not protection for a mark may be granted. Once the trademark office in a designated country grants protection, the trademark is protected in that country as if that country's office had registered it.
The Madrid Protocol also streamlines the consequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or the name or address of the holder with the World Intellectual Property Organization's (WIPO) International Bureau. The International Bureau administers the Madrid System and coordinates the transmittal of requests for protection, renewals, and other relevant documentation to all members.
The International Trademark Registration Process under Madrid System
Flowchart Showing the International Registration Process under Madrid Protocol
Stage 1 – Application through National or Regional IP Office (Office of Origin)
Before filing an international application, an applicant needs to have an already registered trademark or have filed a trademark application in his or her national Intellectual Property (IP) office. An international registration under the Madrid Protocol can be filed by any national or legal entity having a real and effective industrial or commercial establishment in a member country. At the time of filing, the applicant designates other Madrid Protocol countries in which he or she wishes to seek protection. The registration or application is known as the 'basic mark.' After that, the applicant has to submit the international application through this same IP Office, which will certify and forward it to WIPO.
Stage 2 – Formal Examination by WIPO
WIPO only conducts a formal examination of the international application. Once accepted, the applicant's mark is recorded in the international register and published in the WIPO Gazette of International Marks. WIPO then sends the applicant a certificate of the international registration and notifies the IP offices in all the territories where the applicant wishes to have his or her mark protected.
Stage 3 – Substantive Examination by National or Regional IP Offices (Office of the Designated Contracting Party)
The IP offices of the countries designated in the application will decide within the applicable time limit (12 or 18 months) following their respective laws. WIPO will record the decisions of the IP offices in the International Register and then notify the applicant.
If an IP office refuses to protect the mark, either totally or partially, this decision will not affect the decisions of other IP offices. The applicant can contest a refusal decision directly before the IP office concerned under its legislation. If an IP office accepts to protect the mark, it will state the grant of protection.
Madrid Protocol Database and Madrid Protocol Database Search
Before filing an international Trademark Application, the applicants should, at the very least, perform a search on the Madrid Monitor, which runs a search on the trademarks registered through the Madrid Protocol, for marks similar or identical to their marks that are already registered in the countries. The applicants should then plan to designate on the international application.
WIPO Global Brand Database, which runs a search on an extensive database of trademark registrations from 55 national and international collections, including the trademarks registered through the Madrid Protocol, is also another exceptional resource to find similar or identical trademarks.
By conducting this search, the applicants can scale the ease or difficulty of registering their marks in the countries they plan to designate on the international application and modify their prosecution strategy accordingly. They also have the choice of contacting the IP experts to help them fill their trademark applications for registration correctly.
Term of the International Registration
The international registration of the mark is valid for ten (10) years. The applicant can renew the Trademark Registration at the end of every ten (10) years directly through WIPO with effect in the designated members concerned.
The fees payable for an international registration are as follows:
The basic fee, which increases if the mark is in color or if the application for the mark includes more than three classes of goods/services; and
The individual fee for each designated country, which increases if there is more the one class of goods/services.
The current basic fee is USD 465, and there is a fee of USD 50 per additional class over the three covered classes. The individual fees for each designated country vary. Overall, it is projected that the expenses for applications filed under the Madrid Protocol should be less than the filing fees for applications individually submitted to an equal number of foreign national offices.
International registrations are freely assignable to any third party that has an establishment, domicile, or the nationality of a country in the Madrid Protocol system. The same can limit a rights holder's ability to transfer the rights in a trademark because registrations are not assignable to third parties that are in non-member countries.
Advantages of the Madrid Protocol
The Madrid Application permits the trademark owners to target the countries in which they need Trademark Protection. When a company expands into new markets beyond those already designated, a simple, low-cost update to their Madrid Application makes the modification painless. For businesses that have a global presence, the Madrid Protocol offers many significant advantages, such as:
An easy filing process, which also leads to cost reduction;
All administration is streamlined and centrally filed, registered, renewed, and maintained. Before the ratification of the Madrid Protocol, trademark protection abroad required the filing of individual applications tailored to the various preferences and fee structures of each nation;
All applications and communications take place in the applicant's chosen language (English, French or Spanish);
There is no need to appoint the local representatives in each designated country. The requirements of power of attorney are required to be met only in the base country;
There are no other document requirements. Only the statement of use is required in some countries;
The geographical extent of protection of an international mark can be extended at any time so that new designations can be added as they become of commercial interest;
There is a definite, fixed examination period: either 12 months or 18 months. If no objection is raised by an office within the time limit, the application will gain automatic protection;
If there are no objections raised by the national trademark office or no oppositions filed by third parties, there is any need to appoint a local representative in that country;
When considering various countries (more than 5), the fees can be significantly lower if done through the Madrid System;
Changes after registration, such as a change in the name or address of the holder, or a change (total or partial) in ownership or a limitation of the list of goods and services, may be recorded with effect for several designated contracting parties through a single, simple, and centralized procedure with the International Bureau of WIPO and with the payment of a single fee; and
There is an option to make subsequent designations in other Madrid member countries at a later date.
Disadvantages of the Madrid Protocol
The Madrid Protocol is not free from disadvantages, which are, in particular, as follows:
'Central attack' means that the international registration depends on the basic application or registration for the first five (05) years of the issuance of the international registration. If the basic mark is canceled or abandoned by its owner, the international registration will also be canceled, along with any protection claimed in other countries. Each of these canceled, national applications can be transformed into a national one, but only at a considerable price and effort.
Ownership of the mark, along with its international registration, cannot be transferred to an individual or entity not domiciled in a member state of the Madrid Protocol.
Trademarks cannot be modified. After a mark has been submitted to WIPO to become an International Registration under the Madrid Protocol - the mark itself cannot be changed.
Class numbers used within a Madrid based application cannot be changed. The wording of classes is narrowly drawn, and the application can only contain the specific class numbers that were originally submitted.
It is not possible to add classes to an application.
The Madrid Protocol provides a convenient and cost-effective way of obtaining trademark protection in several countries. It can be a one-stop-shop for an international filing and maintenance strategy. For swift protection, concurrent global protection, or jurisdictions with weak local representation, consideration should be given to using the Madrid Protocol since it is an accepted fact that filing separate applications in the trademark offices of various countries is not easy. Completing one application in one single language is much easier than applying with each country that mandates its language, especially if one plans to register in many countries at one time. The Madrid Protocol often saves the applicants' time and money because only one application is filed in place of a bundle of national applications. There is no need to pay for translations or hire a representative in each country.
For the protection of a large number of similar trademarks targeted at one jurisdiction (for example - associated marks or series trademarks) - local ownership of the trademark marks that anticipate change over time or protection in non-member countries (few countries are still not members of the Madrid Protocol), consideration should be given to using other registration schemes or national applications. If office actions or oppositions are issued through a country's trademark office, one may need to hire local attorneys to assist in responding and completing the registration. If the applicant anticipates that there will be changes as to the class of the trademark or ownership of the mark, a national application is preferred because in a Madrid application, adding or removing additional classes is challenging, and later transferring ownership of the trademark, even more so.
Effective utilization of the Madrid Protocol necessitates effective administration and timely management of trademark applications owing to its stringent timelines. It is imperative to analyze the appropriate prosecution and protection strategy for a company's trademarks correctly. Some questions that businesses should consider before deciding whether to go for an international registration are:
How many countries will be designated?
Will the trademark be used in the same way in each country?
Is there any possibility of adding new classes in the future?
Are the target countries of the product/service members of the Madrid Protocol?
Based on the answer to these questions, an applicant should decide his or her trademark application strategy. Considering both the pros and cons of the Madrid Protocol, it can still be said that the advantages of a trademark application through the Madrid Protocol far outweigh the disadvantages, specifically today, because most businesses have a global outlook due to the rise of international e-commerce platforms and global markets. Hence, companies envision far-reaching protection for their trademarks.
Source: https://www.kashishworld.com/madrid-protocol-is-it-the-correct-choice-for-you/
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