There are three ways of protecting your trademark internationally:
- If you just want protection in the EU then the Community trade Mark registration (CTM) is the best option
- If you want protection outside the EU then you will either have to register your mark separately in the individual countries of interest to you or
- File a Madrid Protocol application designating the countries you want protection in. However, only countries which have signed up to this agreement can be included in the application.
What is a Madrid Application or a Madrid Protocol Application?
1. A Madrid Protocol Application is an international trademark application that allows you to extend protection of your trademark to countries of your choice by filing a single application to the World Intellectual Property Organisation (WIPO). However, only countries which have signed up to this agreement can be included in the application. Under the Madrid Protocol it is now relatively inexpensive for small and medium-sized businesses to obtain a broad global ownership of their trademarks that was previously only available to large multi-nationals.
2. For an International application to be considered:
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- you must have an application or a registration in the UK or EU on which to base your application
- the International application must be for the same mark as the UK or EU application or earlier registration
- the goods or services in your International application must be covered by your UK or CTM application/registration
- The proprietors details must be the same (and they must be domiciled or have a real and effective business interest in the UK or EU
- the countries you want protection in must be signatories of the protocol
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3. The cost to apply depends on which or how many countries you want your trade mark to be protected in. For any international application you will have to pay:
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- a basic fee.
- additional fees if your mark is in colour
- additional fees if your mark contains more than 3 classes (in certain cases you may have to pay extra fees for more than one class of goods or services).
- a fee for each country you want protection in. Fees differ from country to country
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The International Registration is reliant on the base application/registration in the Office of Origin for the first five years of its life. If the base registration is:
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- opposed
- revoked
- cancelled
- renounced
- invalidated
- lapsed
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either partially or in totality during this period, the International registration will cease in respect of the goods/services effected. The dependence is absolute and is effective, regardless of the reason for the total or partial failure.
5. To soften the consequences of this dependency WIPO have a provision called transformation. This allows the holder to change the designation to become a national application/registration on the payment of a fee.
6. Opposition can also be filed individually against the mark in any of the designated countries, but this will only affect the International Registration in that country, if successful.
What are the advantages of the using the Madrid Protocol to get international trademark protection?
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- 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.
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What are the disadvantages of the Madrid Protocol for international trademark registrations?
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- There is no automatic entitlement to use this system. 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.
