International trademarks – Is the Madrid System right?

The Madrid System for International Registration of Trademark renewal allows brand owners the ability to apply and maintain trademark protection in 124 other countries with one single procedure. Only one language is required and only one set of fees. However, protection levels can vary and the process can have its pitfalls.
Madrid System is an international system for registration of trademarks that allows brand owners to easily register their valuable trademark rights in many international jurisdictions. The Madrid system, which is centrally administered in Geneva by the World Intellectual Property Organisation, allows brand owners, who are from 108 member nations, to register their valuable trademark rights in multiple international jurisdictions ( including Pakistan, as of 24/05/2021), through one single procedure. Only one language is required and only one set costs.
According to our experience, some clients can achieve cost savings greater than 40% when compared with national filings.
How does the application work?
An International Right Application (IR) must have its foundation in a national application filed in one of the members countries. Applicants may file their IR request at the same time they submit their national applications, or within six months if it is to claim priority.
As with national trademark applications brand owners must specify the class of goods and/or services to which the trademark applies. However, they must also specify the territories where the trademark is to be used. WIPO handles all administrations and maintenance. But each country designated will have a trademark that is its own entity, much like a national trademark registration.
Benefits from the Madrid System
Madrid System offers many benefits to companies with an international presence.
• A simplified filing procedure that leads to cost savings
• All administration can be streamlined by being centrally filed and renewed.
• All communications and requests must be done in the language chosen by the applicant (English French Spanish).
• No need to appoint local representative in each country.
• There are no formalities required to sign documents, such as powers or attorney. However statements of use for some jurisdictions may still be required.
• The international mark’s geographic protection can be extended at anytime. Therefore, new designations are possible as soon as they become commercially important.
• The exam period for a trademark application is fixed at 12 months or 18 month. The application will automatically be protected if there is no objection from the trademark office.
• If no objections or oppositions are filed by third party, then there is no need to appoint any local representative.
• A later designation of the European Union to a IR could be the best method of protecting a EU trademark, particularly if it is not possible to avoid an objection from a specific part of the EU. The IR system allows the EU to be changed to national designations by countries not affected. It is often more straightforward than converting a direct European Trade Mark (EUTM), application into national applications.
Advantages of the IR-system
The Madrid System, however, is not without its flaws. It has both inherent vulnerabilities and problems. This is a particular example:
• An IR filing must be used. Clients from the European Union will need to have a ‘home’ filing. This could be a local or EUTM application, or registration at this time ( click HERE for information on UK rights following Brexit). The international application is dependent upon the home filing within five years of the IR registration. This means that the international registration can be automatically cancelled if the domestic filing is not filed or abandoned. This is called an ‘attack central’. It is possible, however, to ‘transform the designations of a centrally -attacked IR Registration back to National Applications. This will negate any cost savings.
• Third parties are allowed to raise objections at country-by–country level as long as the WIPO system respects local trademark laws. This means that even if a registered mark is accepted in a home jurisdiction, that doesn’t mean it will automatically be accepted in all countries listed in an IR application.
• Office actions have short deadlines. It can be difficult to appoint agent and provide a timely answer. China, for instance has a common deadline of two weeks.
• Also, the time it takes to process an application can vary greatly. The registration process can be as fast as a national one in some jurisdictions. It takes about one to two year for some. The timescale for designations such US and EU is significantly longer.
• The System doesn’t cover all jurisdictions. WIPO’s website provides a list of all the member nations of both the Agreement and Protocol.
• Some countries, including those on Africa, do not have the necessary laws in place to recognize the international registry system. This can cause enforcement problems.
Is it right for you?
A company operating globally will most likely be interested in key overseas territories like China, India or Japan. The IR System can help companies register trademark rights in cost-effective ways in these countries. Before applying, brand owners need to be sure that they get the protection they require in the designated country.
• How many countries can be identified?You can file as many or as little as you’d like. It depends on the number of countries needed. If a company is only interested with one or two designations, it may be more cost-effective or easier to file national requests. Additionaly, certain designations may require Protocol’s stricter requirements than the national.
• Can the trademark be used in each country in the same way?An IR cannot have its use/presentation changed to reflect the differences between each designation. However, it’s possible to limit the goods/services according to a particular country. To avoid a particular objection.
• Which countries will be designatedUnfortunately, in certain jurisdictions, most notably India and China, an IR-acquired legal right is more susceptible than a right that was acquired through a national register. It is important not to make a blanket registration strategy. Instead, companies must weigh the cost-efficiency benefits of the Madrid System and the need to protect critical markets.
• What about BrexitPlease be aware, however, that post-Brexit UK will not be covered for IR applications designating the EU.Click hereFind the latest advice about IRs designating UK on Brexit. UK applicants or businesses are now limited to submitting new International applications based on UK law after the UK left the EU.
A few anomalies can also be found in key areas.
• US trademarks have a six-year deadline for filing a Statement and renewal of their trademarks with WIPO. There is also a 10-year Renewal, Use, and Renewal deadline. These deadlines aren’t always obvious, so it’s crucial to get help from an IP attorney.
• It is not necessary to prove that the mark has been used in the US for it to be registered.
• International applications are not eligible for the Supplemental Register.
• The Madrid System is not able to amend any classes submitted, even if it contains the correct class.
• China’s Trademark Office divides each class in an unusual system. A trademark for a specific subclass will cover all the items in that subclass but it is not applicable to other items, even if they are within the same classification under the IR (which uses Nice Classification).
• Class 35 does not allow for ‘Retail Services’.
• The designation will still be protected after the examination is complete, but applicants will not receive registration certificates. This could create problems for brand owners who wish to litigate China. To obtain a Supplemental Certificate, they will need additional fees. It can take up 6 months.
Japan Cuba
• Designation fees can be paid in two parts. Once the application is approved for protection, the second part will become due. The designation can be revoked if the second party fee has not been paid within the stipulated time.
• Each class within the Madrid applications will be assigned an individual local number.
Brazil, Estonia Estonia India Namibia Namibia Philippines
• These countries are not eligible to be added to an IR if filed after they have acceded under the IR (Madrid).
Brazil, Mexico Turkey, Canada
• These IP offices in these jurisdictions no longer notify trademark holders of refusals through international trademark systems. It’s crucial to work closely with an IP provider, who actively monitors and responds to applications, in order for appropriate action to be taken.
Making the most from the System
Despite all the challenges and inconsistencies with registration, the IR system is an important and highly regarded process for obtaining trademark right in multiple international jurisdictions. It’s part of a solid trademark registration strategy that allows brand owners cost-effectively to obtain protection for certain territories. However, they may also need protection in difficult jurisdictions with their national registrations.