Difficulties with the Madrid Protocol for trade mark registration

Difficulties with the Madrid Protocol for trade mark registration

Introduction

The Madrid Protocol for trade mark registration has a number of clear benefits, most obviously that it is often substantially cheaper than filing direct national applications when protection is to be sought in more than a few territories. Many applicants will take a view that this offsets the potential difficulties, some of which are described below. Neverthless, when seeking protection in some countries (particularly the US and China) the Madrid Protocol has siginificant limitations.

Dependency on base application/registration

For five years from the date of the international registration, the protection resulting from the international registration is dependent upon the basic application(s)/registration(s).

This means that if (i) a basic application is refused or withdrawn in whole or in part, or (ii) a basic registration (or a registration resulting from the basic application) is cancelled, lapsed or surrendered in whole or in part, within five years of the date of the international registration (or as a result of an action commenced within the five year period), the international registration will be cancelled in all contracting parties to the corresponding extent. It may be converted to direct national applications, but this is expensive.

In order to avoid the risk of losing protection in all designated contracting parties if a basic application is rejected, it is preferable to base an international registration on a registration rather than an application, where possible.

Variations in law

Madrid Protocol registrations may cover many territories and as they are filed without seeking advice from local attorneys in each country (which greatly reduces their cost), they are at risk of receiving unexpected objections which would have been avoided by the direct filing route.

Some territories, notably the United States, allow only limited specifications of goods and services which are significantly narrower than would usually be used in the UK and many other territories. Accordingly there are frequently specification objections in the US which incur costs to address.

Lack of registration certificate

Many Madrid Protocol designated states do not issue registration certificates except perhaps on request (e.g. China) and this can delay enforcement when required.

Short deadlines to respond to objections

In some territories objections raised by national offices (e.g. China) have very short response deadlines. Within that period of time we require to receive the objection, which is not always prompt, discuss how to respond (if required) without our client and usually to seek advice from and/or instruct local attorneys, who will often require a power of attorney to be completed. This short timescale frequently presents a problem.

Inflexibility

The Madrid Protocol does not provide for the filing of divisional applications. This means that if you receive an objection in one class, there is no way to proceed to registration in other classes until the objection is addressed. In many territories it is not possible to move goods or services between classes to address classification objections which occasionally leads to a loss of scope of protection.

A number of issues apply to the United States, for example an application under the Madrid Protocol designating the US may only be on the basis of "intention to use" and not other bases, such as "actual use" which would usually be preferable, where appropriate.

Enforcement difficulties

The Madrid Protocol is not fully enshrined in law in all territories which are signatories, for example Madrid Protocol registrations covering OAPI are not enforceable in all states.

Extended timescales

Although registration under the Madrid Protocol may be faster than national registration procedures in some territories, there are other territories (e.g. the UK and the EU) where it is a good deal slower than direct national applications. Although the process should generally be complete within 18 months of an application having been filed sometimes there is an opposition period which extends well beyond this date.

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