In
our Blog#2, we discussed the territorial nature of trademark rights: a
trademark is generally enforceable only in the jurisdictions where it is
protected. Businesses seeking protection abroad may file nationally, use an
applicable regional system, or take advantage of an international filing
mechanism.
The
principal international mechanism is the Madrid System, administered by the
World Intellectual Property Organization (WIPO). The Madrid System currently has 117 members
covering 133 countries. It is available to applicants who are nationals of,
domiciled in, or have a business establishment in a Madrid System member.
One
application – but not one worldwide trademark
The Madrid System allows
an applicant to submit one international application, in one language, and pay
one set of fees while designating the members in which protection is sought. This
allows for both time and cost efficiency, as it makes it possible to avoid
applying at each country separately and pay separate fees for each
jurisdiction. It is also a convenient way to then monitor your trademarks, by
being able to modify, renew, and expand them through one single system.
It is important,
however, not to confuse this centralized filing mechanism with a single
worldwide trademark. Filing an international trademark application through the
Madrid System does not automatically confer protection in all 133 member
countries, nor does it guarantee protection in all countries designated in the
application. Applicants
must select the relevant markets, pay fees based on the designated members and
classes, and obtain protection separately in each designated jurisdiction, as each
designated trademark office applies its own domestic law when deciding whether
the mark may be protected.
How
does the Madrid System work?
Before
using the Madrid System, the applicant must have filed or registered a national
or regional trademark with the intellectual property office of a Madrid System
member. This application or registration is known as the “basic mark,” and the
relevant office becomes the applicant’s “Office of origin.” The international
application must be based on that mark. In particular, the international
application cannot cover a broader list of goods and services than the basic
mark.
Upon
completing this step, you then file for international registration.
The international application must be submitted through the Office of origin,
not directly to WIPO. Depending on the procedures offered by that office, the
applicant may use Madrid e-Filing, the office’s own electronic service, or the
applicable WIPO form. The Office of origin checks and certifies that the
information in the international application corresponds to the basic mark and
then forwards the application to WIPO.
The
next stage (formal examination) is where WIPO examines the application for
compliance with the Madrid System’s formal requirements. If those requirements
are satisfied, WIPO records the mark in the International Register, publishes
it in the WIPO Gazette of International Marks, issues a certificate of
international registration, and notifies the offices of the designated
members. The procedure, however, has not yet been completed.
The
last “international” step mentioned above leads to the substantive “national” examination
stage. In this stage, each designated office examines the mark under its own
national or regional law (i.e. if EUIPO is designated). It may grant protection
or issue a provisional refusal, for example, because the mark is considered
descriptive, conflicts with an earlier right, or does not satisfy a local
requirement.
Provisional
refusals can be appealed at the domestic level through the procedures of that
jurisdiction, often with the assistance of local counsel. A refusal applies
only in the jurisdiction that issued it and may be total or limited to
particular goods or services, and protection in the other designated members is thus
not affected.
Therefore,
although the international trademark protection system is designed to ensure
efficiency and convenience, it is important to keep in mind that the
registration of your trademark in the countries where you seek protection will
be dependent on the national laws of such countries, despite that the filing
was done through a central, international mechanism.
When deciding on the
registration route, another crucial point to consider is that, during the first
five years, the international registration remains dependent on the basic mark
before the Office of origin. In practical terms, this means that if, during
this five-year dependency period, the basic application or registration is
refused, withdrawn, cancelled, restricted, or otherwise ceases to have effect,
the international registration may also be cancelled, in whole or in part, to
the corresponding extent.
In
conclusion, the key takeaway is that before filing, applicants should carefully
select their target markets, conduct appropriate clearance searches, review
local requirements, calculate the likely fees, and assess the strength and
stability of the basic mark. A well-planned Madrid application can save
considerable time and expense; however, an unsuitable filing strategy may
simply postpone complexity until the national examination stage.
For more information,
you can contact us at info@ip-legals.com.
