The International Trademark Registration system
Trade mark rights are territorial rights. However, the cost of obtaining and maintaining a trade mark registration in every jurisdiction around the world is most likely prohibitive. Generally, trade mark holders will register their trade mark in the jurisdictions where they operate, and if costs allow in additional jurisdictions where they market and sell their products and finally.
Most countries around the world have national trade mark registration systems. However, to facilitate wider coverage, there are also some additional systems that enable a holder to obtain protection in multiple jurisdictions. There include the European Trade Mark System, OAPI – The African Intellectual Property Organisation, ARIPO – the African Regional Intellectual Property Organization and the Madrid System.
As Qatar becomes the 131st member of the Madrid system, this post will focus on the Madrid System, which is based on the Madrid Agreement Concerning the International Registration of Marks and the Protocol relating thereto.
The Madrid agreement commenced in 1891 and was amended several times thereafter before the Protocol to the Agreement came into force in 1989. The Madrid system is administered through the World Intellectual Property Office (WIPO) and provides a means of obtaining an International Registration, generally indicated by the prefix WO or IR.
The Madrid system provides a centralised filing and administration mechanism, which gives holder the opportunity to obtain and maintain trade mark registrations in up to 131 member states.
How does it work?
To begin with an applicant must have a base application or registration in their home country, which must be a member state of the Madrid Agreement or Protocol. The holder can then file an International Application for the same mark, for some or all of the goods covered by the base application.
The International application can cover any combination of the member states that are a party to the Agreement/Protocol at the time of application, although the cost of filing will depend, to a large extent on these designated states. Each member states has set a filing fee for designating that states in an international registration, so the actual cost will depend upon the particular states designated.
The International Bureau at WIPO will then examine the application for formal requirements. Once they are happy with the application, it will be registered and a registration certificate is issued.
However, this is not the end of the examination process and does not mean the holder has registered rights in each designated state. The National Office of each designated state will then each examine the application in accordance with its national procedures.
Once the application is accepted in a national state, all transactions relating to the registration are generally carried out centrally at WIPO, including payment of renewal, surrender of goods/service and recordal of assignments or licenses.
Benefits of the Madrid System
If no objections are raised by the national offices, there is no need to appoint a local attorney, which can significantly reduce costs associate with obtaining and maintaining the registration. Even if national objections are raised, costs post allowance can be lower due to the centralised processing.
Also, it is possible to extend the geographical coverage of an International Registration, either as the holder expands their operations or has additional funds become available to obtain protection. Whilst further designated states can be added to an International Registration at a later date, these will only be registered as of the date of filing the additional designation. The registered protection will not be backdated to the original filing date of the International Registration.
Some limitations
An international application can only be filed for the same mark as the base national application. Furthermore, the list of goods and/or services covered by the application cannot extend beyond those covered in the base application.
The Madrid Trade Mark System can be a very useful tool in securing worldwide protection for your trade mark. However, it may not always be the most appropriate route for your business. Planning and managing an international filing programme can be complex and should be tailored to your specific needs, with regular reviews to ensure your needs continue to be met as your business changes. Our Trade Mark Attorneys can assist you with planning, implementing and managing you trademark portfolio. Please feel free to contact us to talk through your requirement.