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IP Cases & Commentary – Details

25 March 2010

International Trade Mark Registrations

Helen Cawley

The Madrid system for international registrations is governed by the Madrid Agreement (1891) and Madrid Protocol (1989). The system is administered in Geneva, Switzerland by the World Intellectual Property Organisation (WIPO).

The Madrid system allows an applicant to obtain protection for their trade mark in a number of countries throughout the world as a bundle of national rights and offers cost savings over applying for individual national applications. At present there are more than 80 countries which are party to the Madrid Protocol system.

An application for an international registration can be filed by any person or legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid system.

An international registration needs to be “based” on a national registration where it is governed by the Madrid Agreement. However, the international registration can be based on an application where it is governed by the Madrid Protocol. As the United Kingdom and Community Trade Mark offices have signed up to the Madrid Protocol, any application made through these offices will be governed exclusively by the Madrid Protocol. For this reason, only the Madrid Protocol system will be discussed further.

Once a “base” application has been made, an application for an international trade mark may be filed via the office of the original application, i.e. the UK Intellectual Property Office (IPO) or the Office for Harmonization in the Internal Market (OHIM).

When making the application, the applicant needs to state in which of the 80+ countries they wish to register their trade mark. In addition, fees need to be paid. The fees are dependent on how many countries are designated and how many classes are of interest to the applicant. In addition to the official fee, D Young & Co will charge for their services in advising on the application and assisting in the preparation of the application, including devising an appropriate class specification.

Once the application has been filed, the World Intellectual Property Office (WIPO) will notify the countries designated of the new application in their country. Each country will then examine the application in accordance with their own trade mark laws.

Each country which has signed up to the Madrid Protocol has agreed that any refusals of the application, whether they are in connection with registrability issues or conflicting third party rights, should be notified within 18 months from the date that the national office was advised of the designation. However, in some cases countries may advise that oppositions may potentially be filed outside this 18-month period.

It is important to note that for a period of five years from the date of international registration, the international trade mark remains dependent on its “base” registration. Until the five-year period has expired, the international trade mark will be limited to the same extent as the base registration. This may be due to part cancellation or part voluntary surrender.

An international registration is effective for 10 years. It can be renewed indefinitely for further periods of 10 years on payment of the required renewal fees.

It is possible to add new countries to your international registration at any point. This will require the payment of additional fees.

The Madrid Protocol offers a number of advantages to its users. Only one application needs to be prepared, in one language, and one fee is paid. Subsequent designations can be made at any stage and follow the same format.

Any future changes to the registrations, such as a change of name or address or assignment, can be done on one form, which applies to all countries stated. Provided no objections are raised by an individual national office, no local attorney needs to be appointed, saving the applicant time and costs.

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