The Madrid Trade Mark System Jan Vleck Partner, Reddie & Grose London and Cambridge AIPPI in Hyderabad - 2011. What is it? How does it work? The nuts and bolts. Why would you use it? Why wouldn’t you use it? Is it a good thing? And when will India join?. The Madrid System.
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“The Madrid Agreement”.
Concluded 1891; Came into effect 1892.
Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
“The Madrid Protocol”.
Concluded 1989; Came into effect 1996.
India Joins Madrid Protocol?The Madrid System
Community Trade Mark is an exception to this.
CTM registration is a unitary right covering the entire EU, overlapping with National Rights.
Madrid System leads to International Registrations.
These are not enforceable rights.
But bundles of National or Regional registrations.Structure
WIPO acts as a middle-man between the applicant and National and Regional Trade Mark Offices.
Which countries can an International application lead to?WIPO
Country where applicant has a real and effective effective industrial or commercial establishment.
Country where the applicant is domiciled.
Country of which applicant is a national.
- Same bases 1, 2 and 3, but applicant can choose.Who can apply?
can file an application under the Agreement.
Entitled in a Madrid Protocol member country?
can file an application under the Protocol.
Entitled in a country that is a member of both?
can file an application under both.
Entitled in India?
- Protocol only, designating Protocol member countries. Cannot designate Algeria (only members of Madrid Agreement).Where can you apply?
Based on a “home” registration or application in the Country of Origin.
Application sets out:
Goods and Services.
Applicant’s entitlement to file.
Home application or registration.
At least one designation.
In an official language of Madrid Protocol: English, French, Spanish.Procedure 1
Do the Mark and Goods and Services correspond to the home application or registration?
The date and number of the home application or registration.
The date of filing of the International application.
If applicable, whether the Submission fee has been paid.
The Office then forwards application to WIPO in Geneva.Procedure 2
WIPO has the final say on the form and classification of goods and services.
WIPO collects official fees.Procedure 3
JOHN LEWIS PLC
171 Victoria Street,LONDON, SW1E 5NN (GB)
Public Limited Company United Kingdom
Linda J HarlandC/o Reddie & Grose
16 Theobalds RoadLondon WC1X 8PL (GB)
Textiles and textile goods, not included in other classes; bed and table covers. Tissus et produits textiles, non compris dans d'autres classes; couvertures de lit et de table.
GB, 15.02.1956, 750993
AT, GR, IE, NO, PT
Each Office examines the application according to its normal procedures;
- Trade Mark Office examination.
- Third Party Opposition period.
If no objections arise, some Offices of Contracting Parties tell WIPO, who tell the applicant.Procedure 5
WIPO notifies the applicant.
The applicant responds directly to the Office of the Contracting Party.
This usually (always?) requires a local Address for Service, and appointment of a local attorney.Procedure 5
Scope of goods and services may be narrowed as a result of objections.
So the scope of the designation may be narrower than that of the International Registration. It cannot be broader.
Scope can differ in different countries.Procedure 6 (and last)
- After filing an International Application you can add new Designations at any time.
- File through Office of Country of Origin or WIPO.
- WIPO collects fees and notifies Office of Contracting Party.
- Office has 12 or 18 months to raise objections.
- Registration granted or refused.Other Features 1
- For 5 years after International Application filing date, if the home application or registration is narrowed or limited in any way, then the International Registration is correspondingly narrowed or limited.
- If basic application or registration is invalidated, then so is the International Registration.
- Under the Madrid Arrangement, this is terminal.
- Under the Madrid Protocol, conversion into national applications is possible.Other Features 2
- Simplicity - if no objections are raised.
- requires good advice.
- Single application.
- Centralised register and renewals.
- Complexity - if objections are raised.
- Central attack.
- Home country is outside International Registration
- Dependence on home country practice.Why use it?
Madrid Agreement Complementary fee is very low.
Madrid Protocol fees usually comparable to normal National or Regional fees.
Cost savings in local attorney fees if no objections are raised.Costs
But is it used less than one might expect?
Why don’t more countries join it?
Why does the PCT seem more successful?
Will the Madrid System become as ubiquitous as the PCT?Is it a Good Thing?