Companies operating in different countries are likely to need trade mark protection in multiple territories to cover their key markets. The Madrid System offers the opportunity to seek protection in many countries using a single application.

What are trade marks?

A trade mark is any sign capable of distinguishing the goods or services of one individual or enterprise from another. Typically, trade marks include words, numerals, symbols or figures, but in recent times the notion of trade mark has been extended to “non-traditional” signs such as colours, three-dimensional shapes, sounds, moving images or anything else that can designate the origin of one’s goods and services.

Trade mark registrations are territorial rights which give the holder of the registration an exclusive right to use that mark in connection with the goods or services for which it is registered.

The Madrid System

The Madrid System is administered by the World Intellectual Property Organization (WIPO) and gives trade mark holders the opportunity to extend trade mark protection to several countries using a single application. The Madrid Union is made up of 123 Contracting Parties, including the UK and the European Union (EU) 1.

An international registration filed under the Madrid System is equivalent to a bundle of national registrations.  Once an international application is filed, it is up to the designated Contracting Parties to determine whether or not the mark can be registered and to determine the scope of such protection, in accordance with their domestic legislation.

To be entitled to use the Madrid System, the trade mark holder must be a national of, be domiciled in or have a business in one of the Contracting Parties2.

How to file an application under the Madrid System

In order to file an international application, the trade mark owner must first have registered or applied to register the trade mark through their “home” IP office. This registration or application is referred to as the “basic application” or “basic registration”.

Once the basic application or registration has been lodged, an international application must be filed through the same IP Office, which will forward it to WIPO.

The mark in the international application must be identical to that in the basic registration or basic application. The international application must also contain a list of the goods and services for which protection is sought and a list of the Contracting Parties in which the owner wishes to obtain protection.

An international application may also claim priority from a previous application, be it the application with the Office of origin or  a prior application filed with the Office of another country.

A fee must be paid in order for the international application to be processed. The cost of filing an international trade mark application under the Madrid System varies based on the number of classes of goods and services to be covered and on the number of designated Contracting Parties.

Which goods and services to include…

The list of good and services should be prepared with care since it cannot be subsequently expanded or broadened to cover additional goods and services, even if these were mentioned in the basic application or registration.

The list of the goods and services must be covered by or be narrower than the list contained in the basic application or registration. Moreover, it is important that only goods and services currently being offered or due to be offered in the near future are listed in the international application since some Contracting Parties require a declaration of intention to use the mark at the time of filing.

…and which territories

The list of designated countries should take into account current markets of interest as well as potential export markets. Being too restrained in the choice of countries may lead to competitors registering the mark in a country where it has not yet been protected. However, the list should not be overly broad as the mark may be cancelled in the countries where the mark is not used.

A major advantage of the Madrid System is that trade mark holders can extend the geographical protection of their mark at any time after filing by subsequently designating additional territories, so that the international registration is kept in line with actual business needs.

After filing

WIPO conducts a formal examination to check that the international application complies with all formal requirements and that fees have been paid.

If the application is in order, WIPO notifies the IP Office of each designated country and records the international application in the International Register as an international registration.

An international registration is equivalent to a bundle of national registrations. That means that the IP Offices of each designated territory will assess the international application in accordance with their legislation and decide whether or not it can be protected in their jurisdiction.

Once an international trade mark application is accepted, the registration is valid for 10 years and can be renewed indefinitely for further periods of 10 years.

The owner may decide to limit or give up protection with respect to only some of the designated Contracting Parties, for example by not renewing the international registration for one or more designated Contracting Parties.

When to file

The international mark will be dependent on the basic mark for five years, meaning that if the basic mark is totally or partially cancelled the international mark will also be cancelled to the same extent. This is often referred to as “central attack”.

For this reason, it is often advisable to file an international application after the basic application has been accepted for registration and the opposition deadline (if any) has expired in the home country, since this will make it less vulnerable to central attacks.

After the expiry of the period of five years mentioned above, the international registration becomes independent of the basic registration or basic application.

Conclusion

The Madrid System allows trade mark holder to obtain a bundle of national applications by filing an individual application, thereby saving both time and money.

Trade mark holder do not need to file the application in different languages and fees can all be paid centrally and in one currency (Swiss francs), which also allow for time and cost savings.

Another great advantage of the Madrid System is that is makes the management of trade mark registrations across multiple countries much easier, since there is only one registration to renew and changes can be recorded in the International Register through a single simple procedural step. For example, changes related to ownership, licenses, or limitations of goods and services may all be recorded centrally under the Madrid System.

The Madrid system also offers great flexibility to trade mark owners by allowing them to designate additional Contracting Parties at any time after the trade mark has been registered, as well as by allowing them to apply changes to the international registration for only some of the designated Contracting Parties or for only some of the goods and services covered by the registration.

 

If you wish to find out more about the international trade mark registrations please do not hesitate to contact us at hello[@]scintilla-ip[.]com

 

1 A list of all Contracting Parties can be found at https://www.wipo.int/madrid/en/members/.

2 Trade mark owners can check whether they are entitled to file an international application under the Madrid System by using the WIPO’s International Application Simulator.

 

Please note that this blog is for information only, the content of this post represents the opinion of the author and does not constitute legal or commercial advice. Scintilla make no guarantees as to the accuracy of the content of the post or of the webpages which are linked in the post. If you require IP-related or other sort of legal and commercial advice please contact us or consult a suitably qualified legal representative.