Trademark registrations are territory specific, meaning that they will only entitle the owner to the exclusive right to use their brand name in a particular market (such as the United States or the European Union). Often a business will require protection from other parties free-riding or denigrating the reputation of its brand in more than one country. An international trademark registration is one way through which such protection might be obtained.
The concept of an international trademark registration (sometimes called an ‘IR’) can be somewhat misleading. This is because an application for trademark registration through the Madrid system is in fact a series of national trademark registrations, rather than one unitary international trademark registration. This is in contrast to the Community Trade Mark in the European Union, for example, where one single application will result in protection throughout the individual countries of the European Union if successful.
This means that whereas an application submitted through a unitary system such as the European Union is ‘all or nothing’ – it will either result in protection throughout the continent or it will result in no protection – an application submitted through the Madrid system of international trademark registration is less clear cut. Essentially, there are three possibilities: the application is completely successful (resulting in protection in every country selected – the most international trademark registration); the application is completely unsuccessful (resulting in no protection in any of the countries selected; or the application is partially successful (resulting in a piecemeal situation whereby protection is enjoyed in some but not all of the countries selected – the least international trademark registration). Of course, the extent to which any particular application is successful or unsuccessful can vary.
The Madrid system (Madrid Agreement and Madrid Protocol)
The truly international aspect of the Madrid system is that its administration is handled by one central body, known as WIPO (World Intellectual Property Organisation). The system is governed by two similar international treaties, called the Madrid Agreement (1891) and the Madrid Protocol (1989). The reason for the creation of the much more recent Madrid Protocol was that for various reasons the trademark laws or practices of certain countries were not compatible with the 1891 Agreement (significant markets that were not a party to The Agreement included the United States and Japan).
In practice, the two agreements work parallel to each other and to almost identical effect. The body of countries comprised of parties to both or either treaty is called the Madrid Union. On a single application to WIPO it is possible to acquire a bundle of national registrations throughout this Union. To date there are 81 contracting countries in which protection may be obtained.
The complete list of countries which you may apply to for registration as part of the Madrid international system is below. If you would like to obtain protection elsewhere, please visit RightGuard and select the country in question for more details:
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The international trademark application process
When preparing an application for international trademark registration through the Madrid system, the registrant must rely on a ‘home’ application or registration. This is a trademark application or registration that has been submitted or obtained by the applicant in a country that is a party to the Madrid Agreement or Protocol and in which: they are a national; they are domiciled; or they have a real and effective business establishment. Once the application is pending (or completed if the applicant intends to select countries party to the Madrid Agreement) in that home country, the application for international trademark registration is submitted to the home trademark office.
This application is then forwarded to WIPO where it will be given a basic examination for compliance with the formal requirements of the application procedure and to ensure that the applicant has selected appropriate classes. If this examination is passed the application will usually be declared by WIPO as an international trademark registration within a few months.
The application must indicate which of the contracting parties to the Madrid Union the trademark is to be registered in (the designated countries). There is no limit to the number of countries that an applicant may designate, though there are considerations that must be taken into account when selecting. The most obvious of these is fees. WIPO charges a basic filing fee to all applicants, with an additional fee added for every class over 4 selected and for every country designated. Some members of the Protocol may charge an additional fee on top of this to cover the cost of their local trademark examination. All fees are payable in Swiss Francs.
Trademark objections and searches
After registration is granted, the details of the trademark are sent to the national office of each designated country. The Madrid System requires that each national office treats an international registration as it would a national application. This means that though being described as an international registration by WIPO, the trademark is still treated at this stage as being the subject of a new application. In each country therefore, a process of examination and objection will usually take place, to identify if the trademark is capable in principle of being registered in the local jurisdiction and whether it is liable to conflict with the rights of other parties in that market. After this process is complete, most countries in the Madrid Union will notify the owner that the trademark is formally recognised in the country, but some do not. In the latter type of country, a lack of official objection to the mark entitles the owner to assume protection.
No search is carried out by WIPO as part of the international trademark registration process. It is advisable for prospective registrants to consult an experienced trademark lawyer before submitting an application under the Madrid System. This will allow the applicant to make any amendments to the application necessary to maximise its chance of surviving the objections process in each country selected. It is worth baring in mind that if an international trademark registration application is objected in a designated country, it is often necessary to hire a trademark attorney in that jurisdiction in order to defend the objection, thus increasing costs considerably. To obtain a quote for a trademark search covering the countries you intend to register, click here to visit RightGuard.
Validity of international trademark registrations and the central attack
A trademark registration under the Madrid Agreement lasts for 20 years and a trademark registration under the Madrid Protocol 10 years. The validity of the country designations depends on the home registration being valid for 5 years. If the home registration is cancelled during this period (for example due to a court action taken by a third party) then the entire international trademark registration is automatically cancelled. This is known as a central attack on the international trademark. If the trademark was registered under the Madrid Protocol, it is possible to refile the mark in any of the countries originally designated and claim the original priority date of the international trademark.
It is usually wise to demonstrate some form of use of the trademark in each designated country. This is to prevent a third party launching an attack on the trademark registration in any of the individual designated countries. Use in commerce is normally required though use of the trademark in a slightly different form to that registered will sometimes suffice. It is necessary to consult an experienced trademark lawyer about the legal requirements imposed by each individual trademark jurisdiction to be designated in an application.
Advantages of the Madrid system
There are a number of very good reasons to file for international trademark registration, including:
- Potentially very wide-ranging protection
- A single application and set of fees for international protection
- A single language
- Renewal can be obtained with a single application
- It is possible to assign all rights covered by the international registration at once
- It may be cheaper – for example, official filing fees for EU trademark registration are higher than the official EU fee for designating the region as part of an international trademark registration
- It is possible to add other countries to the international registration at any time
- Rights in a particular brand name are enhanced compared to the unregistered alternative
It is of course a very significant commitment (in terms of time and money) however, making it advisable to consult an experienced trademark lawyer before embarking upon international trademark registration. Humphreys & Co. Solicitors have a team of very knowledgeable trademark lawyers who will be very happy to assist you with an initial consultation on the international trademark registration process.
How to file
RightGuard from Humphreys & Co. Solicitors is a unique international trademark registration tool designed to make the process of filing for trademark registration in any country as easy as possible. If you would like to obtain a quote for the cost of protecting your mark internationally, click here.