Difficulties with the Madrid Protocol for trade mark registration

Introduction

Using the Madrid Protocol as a way of putting international trade mark protection in place has a number of clear benefits, most obviously that it is often substantially cheaper than filing direct national applications when protection is sought in more than a few territories. Many applicants consider that this offsets any disadvantages, some of which are described below. Nevertheless, when seeking protection in some countries (particularly the US and China) the Madrid Protocol has siginificant limitations.

Dependency on base application/registration

The protection resulting from the international registration is dependent upon the basic application(s)/registration(s) for five years after filing.

This means that if a basic application is refused or withdrawn in whole or in part, or a basic registration (or a registration resulting from the basic application) is cancelled, lapsed or surrendered in whole or in part,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, the international registration will also be cancelled - which includes the protection in the designated territories. The designations can be converted into corresponding national applications, but this is expensive.

In order to avoid the risk of losing protection in all designated contracting parties, it is therefore recommended that an International Registration be based on a registration, rather than an application, where possible. This should not be problematic for most trade mark owners, but where timing is an issue, it can be a disadvantage.

Variations in law

International Registrations obtained by way of the Madrid Protocol registrations can cover many territories and, as they are typically filed without seeking advice from local attorneys in each country (which is the main reason why Madrid applications are less expensive), there is a greater risk of receiving examination objections that might have been avoided by the direct filing route.

Some territories, notably the United States, insist on precisely worded goods and services, which may be narrower than what would be acceptable in the UK and elsewhere. Accordingly, specification objections are frequently encountered in the US, which incur costs to address. To give some balance, however, it is unusual for any US application not to receive specification objections.

In order to reduce the risk of unwanted objections, it is recommended that local advice be obtained before filing, at least in the more important territories.

Lack of registration certificate

Many of the states that can be designated in a Madrid Protocol application do not issue formal registration certificates, while others only do so on request, for example, China. This can sometimes delay enforcement, and can cause administrative difficulties for distributors in some territories.

Short deadlines to respond to objections

In some territories the objections raised by national offices have very short response deadlines. China is one such example. This creates some urgency due to the limited time in which to receive the objection, which is not always prompt, to discuss with the applicant and, frequently, to appoint, seek advice from and/or instruct local attorneys, who sometimes require additional documents such as a power of attorney to be completed. Such short timescales can be problematic, and while they are consistent with direct filed applications, the time pressure is less as the local attorney is aready in place.

Inflexibility and inconsistency

While the eventual protection conferred by registration is the same, designations of an International Registration filed under the Madrid Protocol are not always treated the same as direct filed applications. For example, if an application has problems in one class, a regular application can usually be divied up so that it can continue to registration in the unobjected classes. This is not always so for designations. Similarly, goods and services can often be moved between classes in order to address classification objections in direct-filed applications, but this may not be an option for a designation. Finally, there is some inconsistency between IPOs as to when changes to applications can be made directly at the national or regional IPO, and when they must be made via the WIPO, which can have an impact on costs due to the need to instruct local counsel.

An issue peculiar to the United States is that, unlike direct filed applications which can be filed on the basis of actual use or intent touse, a US designation of an International Registration may only be filed on an intent to use basis. This can have implications where applications for conflicting third party marks are filed before the priority date of the US designation, but later than the first US use of that designation.

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.

Slow progression

Although registration under the Madrid Protocol may be faster than national registration procedures in some territories, it is more commonly the case that a designation will be slower than a corresponding direct application. While this makes no difference once rgeistration is granted, where timing is important it can make the Madrid Protocol a poor choice.

But overall...

If you need trade mark protection in multiple jurisdictions, and timing is not an issue, the Madrid Protocol is more than likely to be the best, and most cost-effective, option