Perspective

International Registration | Madrid Protocol

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Trade marks are territorial rights and if you wish to gain registered protection for a particular country, you need to apply for protection in that country.  There are two filing options, namely a national trade mark application or International Registration (via the Madrid Protocol).  Here we outline some of the key features on the International Registration.

National Trade Mark Application

With this traditional form of protection, a trader simply applies to register the trade mark in each country of interest.

Local attorneys are required to handle the application in the relevant jurisdiction.  The application process is similar to Australia and New Zealand with some variations as to cost, timing and procedural requirements for some countries.

International Trade Mark Protection

A single application can be filed for an International Registration (IR), pursuant to an international treaty (the Madrid Protocol).  The name is a little misleading in that it does not automatically provide protection internationally and you need to designate particular countries of interest.  The costs vary according to the countries designated.

International Registration Overview

The Madrid Protocol registration system is handled by a central government agency known as the ‘International Bureau’ (IB) of the World Intellectual Property Organisation (WIPO) located in Geneva, Switzerland. The IB is in charge of processing and undertaking preliminary examination of all international trade mark applications filed under the Madrid Protocol system.  There are currently 98 countries which are participating members of the Madrid Protocol.

Current members of Madrid Protocol

African Intellectual Property Organization (OAPI), Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and, Herzegovina, Botswana, Brunei Darussalam, Bulgaria, Cambodia, China, Colombia, Croatia, Cuba, Cyprus Czech Republic Democratic People’s Republic of Korea Denmark, Egypt, Estonia, European Union (EU), Finland, France, Gambia, Georgia, Germany, Ghana, Greece, Hungary, Iceland, India, Iran (Islamic Republic of), Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Lao People’s Democratic Republic, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Mexico, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, New Zealand, Norway, Oman, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Rwanda, San Marino, Sao Tome and Principe, Senegal,Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, the former Yugoslav Republic of Macedonia, Tunisia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam, Zambia and Zimbabwe

A European designation of an International Registration covers, namely Austria, Benelux (Belgium, the Netherlands and Luxembourg), Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the (for the moment) United Kingdom.

This system essentially allows an Australian individual or business to file a single international trade mark application based on an existing Australian trade mark application or registration. This single application is filed with the office of Origin (for Australian traders typically IP Australia) nominating any or all of the other participating Madrid Protocol member countries.

IR Process

The IR must be based on a valid “Basic Application” or “Basic Registration” which is an application filed in a Madrid Protocol country (typically Australia or New Zealand) of which the applicant is a national, domiciled or has a real and effective industrial or commercial establishment. Once a general formalities examination is undertaken, IP Australia or IPONZ will forward the IR to the IB.

IR – Some advantages

Cost – an IR is typically cheaper than a series of national applications.

There is a guarantee on the period (12-18 months from the date of notification of the International Registration) within which potential grounds of refusal to protect a mark can be raised by the Offices of the designated countries. There are no specific time limits imposed for national applications and there can be lengthy delays in obtaining trade mark protection.

Reduced maintenance costs.  Instead of having to separately instruct each local agent to renew national trade mark registrations in each country, the IR countries can be renewed by a single request to the IB. This request will be effective across all designated countries. Similarly, a single request need only be made to record changes, such as name/address details.

Additional countries can be designated at any time after the IR is obtained. Subsequent designations are useful in situations where an Australian business expands operations into another market at a later stage or where new countries accede to the Madrid Protocol.

IR – Some disadvantages

The principal disadvantage is that if the IR encounters an objection in a particular country, we need to instruct attorneys in that country to handle the designation.  There are costs associated with taking over the designation and if the designation encounters an objection the IR may not have been significantly cheaper.

An IR must be based on a national application or registration (a basic trade mark).  An IR is dependent on the basic trade mark for a period of 5 years. Any restriction or cancellation of the basic trade mark resulting from an action that started within this period can also impact on your IR.

Not all countries are members of the Madrid Protocol.

 

 

The Madrid Protocol provides a cost effective system for international TradeMark protection