The Madrid System, administered by the World Intellectual Property Organization (WIPO), is a cost-effective option for trademark owners who want to obtain trademark rights in a variety of critical commercial jurisdictions quickly and efficiently by securing an international registration in accordance with the provisions of the Madrid Protocol (which all Madrid members have now joined) and the Madrid Agreement. The Madrid Agreement is most valuable because trademark owners in countries that are members of both the protocol and the agreement may frequently pay reduced official costs for extensions of protection to countries that are also members of both treaties. They may also benefit from having their extensions of protection reviewed within a 12-month rejection period rather than the Madrid Protocol’s 18-month refusal term. Only approximately half of Madrid System participants are members of both treaties.
What are the most incredible ways to make the most of the Madrid System?
To understand how to get the most out of the Madrid System, you must first grasp how it works, so let’s start with the fundamentals.
A trademark owner must file a trademark application in his or her home country (i.e., where he or she is a national, domiciled, or has an accurate and effective commercial establishment). That application serves as the foundation for filing an international registration application under the Madrid System. The application must be submitted with the patent and trademark office in the applicant’s home country, which will review it for formal requirements before forwarding it to the WIPO for further processing. The WIPO reviews the application to ensure that the goods and services are correctly specified and classified and that the necessary fees have been paid before issuing an international registration and notifying the patent and trademark offices in the extension countries where protection is sought. The extension nations have 12 months (if agreement rules apply) or 18 months (if protocol rules apply) to investigate the request for protection and:
- Approve it by issuing a grant of protection;
- oppose it by filing a provisional rejection,
- or take no action.
Once the applicable 12-month or 18-month refusal time has passed, the WIPO will consider the extension of protection granted if no action is taken. If the WIPO issues a provisional denial, it is sent to the trademark owner or its international registration representative agency, who must then engage local counsel to address the problems before the global registration extension may be approved or denied. Many nations depend on the publishing of the award of the worldwide registration for opposition reasons. Therefore watch notifications for such opposition dates should be carefully scrutinized. On the other hand, many other nations republish international registration extensions in their own gazettes for opposition purposes and inform the WIPO that an extension has been preliminarily granted subject to any potential objection.
The international registration extensions have the same legal force and effect as national registrations once they are considered approved in the Madrid extension nations. However, the legality of these extensions is originally contingent on the continued validity of the home country file, which serves as the foundation for worldwide registration. As a result, if the home country file receives a final rejection, in whole or in part, within five years of the international registration’s issue, the international registration’s scope will be withdrawn to the extent that the WIPO is informed. However, the trademark owner has three months to submit transformation applications in the foreign registration countries of interest to keep the canceled coverage protected.
The WIPO may object to an international registration application if the applicant fails to pay the necessary fees or if the WIPO determines that the products and services described are either unclear or misclassified. The WIPO’s objection will be communicated to the applicant through the home country patent and trademark office, where the international registration application was submitted as a notice of irregularity. The applicant has three months to reply to the application. Applicants who utilize the Madrid System often open a WIPO bank account to pay the official fees, which must be financed in Swiss francs, the WIPO’s operating currency, and the currency it determines its fees. US applicants who have a USPTO deposit account may indicate that any costs payable to the WIPO be paid from their USPTO deposit account when the overseas registration application is submitted. The international registration applicant’s response to the notice of irregularity in the specification of goods and services is typically filed with the home country patent and trademark office, which must certify that the amendments made to overcome the WIPO’s objections do not extend beyond the scope of the international registration basis applications before forwarding them to the WIPO. The WIPO will issue the international registration after the concerns highlighted in the notice of irregularity have been addressed.
Suppose international registration applicants later decide to extend their existing registration to additional countries for one or more of the existing classes of interest. In that case, they can do so by filing a subsequent designation with either their home country’s patent and trademark office or directly with the WIPO. The date that the request for subsequent designation is submitted with either the WIPO or the home country patent and trademark office, as long as it is sent to the WIPO promptly, will be the effective date of the coverage for such additional countries and classes. However, a later designation to add more countries cannot be submitted until the international registration is issued. If the international registration application receives a notice of irregularity from the WIPO, this may take many weeks or even months. As a result, international registration applicants should carefully evaluate the nations and classes they wish to include initially, particularly if they want to claim priority and are nearing the six-month convention priority deadline. Suppose an applicant with a tight priority deadline wishes to add countries after filing the international registration application. In that case, the sole alternative is to submit a new application stating the additional countries before the convention priority deadline expires.
Important practice tips given recent developments
New Members of Madrid
Commercially significant nations such as Brazil, India, Mexico, Indonesia, the Philippines, Malaysia, and Thailand have joined the Madrid Protocol in the last ten years. However, trademark owners must exercise caution to cement their rights in these countries by extending their existing worldwide registrations to these new Madrid members through future designations. When they signed the convention, several of these countries, like Brazil (2019), India (2013), and the Philippines (2012), said that they would only recognize later designations of international registrations obtained after they joined the Madrid System.
Fees for international registration
The costs for obtaining an international registration must be paid at the time the international registration application is submitted for almost all countries in the Madrid System. The costs include any fees imposed by the applicant’s home country patent and trademark office and the WIPO international registration processing fee, and separate fees for each country and class indicated in the international registration application. The WIPO website includes a fee calculator to help applicants figure out how much they owe (https://madrid.wipo.int/feecalcapp/). As long as no preliminary refusals are issued, the costs paid at the start are adequate to guarantee protection in the extension nations for most international registration countries. The Madrid Protocol, on the other hand, allows international registration nations to choose to collect their individual fee in two parts: one when the international registration is submitted and the other when the grant of protection is issued. The following countries have selected this option:
Japan, Brazil, and Cuba are three of the world’s most populous countries.
Applicants seeking international registration extensions should keep an eye out for WIPO notifications stating that the second half of the individual fee is due after their international registration extension has been approved in these countries. If this second charge is not paid in a timely way, the foreign registration extension in that country will expire.
New requirement to provide international registration owner’s email address
Because of the postal service delays caused by the covid-19 epidemic, the WIPO mandated that all international registration applicants and their international registration representative agents, if any, furnish an email address as of February 2021. When registering a change of ownership, email addresses must also be supplied. According to the new regulation, the international registration applicant’s email address must not be the same as the international registration representative agent’s email address. The WIPO has verified that if an application has designated a representative, the applicant’s email address will not be made public and that all communications will be forwarded to the designated representative, with the exception of renewal reminders and notifications terminating the representative agent.
Changes in ownership are recorded
The Madrid System has the benefit of registering a change of ownership by submitting a single form with the WIPO that informs the extension nations of the change. As more countries join the Madrid system, trademark owners are discovering a patchwork of national filings and international registration extensions of protection for identical marks in a variety of Madrid nations. This may pose issues regarding registering changes in ownership since many national agencies take months to record such requests, while the WIPO generally handles them promptly. Consequently, a national office may reject a WIPO request to register a change in ownership owing to citations of national registrations for comparable marks for which the national office has not yet recorded a matching ownership change. This is common in China, but it may also happen in other Madrid nations. To prevent refusals, trademark owners should engage with local counsel on the best approach to coordinate the timing of the filing of the change of ownership requests.
Division and merger of international registrations
Many trademark owners seek international registrations in several classes, fearing that a citation or objection to a portion of their coverage would prevent their full international registration extension from being granted in that jurisdiction. Some nations may provide coverage that is not challenged or objected to while the trademark owner attempts to settle the rejection against the remaining coverage, while many do not. As a result, in February 2019, the Madrid System introduced a new process that allows trademark owners to split the rejected coverage from a multi-class international registration extension of protection in a particular jurisdiction to register the remaining coverage. If and when the necessary problems are addressed, the new WIPO process allows the trademark owner to request that the now approved range be combined back into the original international registration, allowing the relevant rights to be consolidated into one international registration once again. This is a positive step, however, several Madrid member nations have chosen to opt-out of the new merger or split process since their local law prohibits it.
If the proprietors of the international registrations to be combined are the same, it is always feasible to merge an international registration arising from a partial change in ownership. This is only feasible if two or more international registrations were split from the same international registration at the outset. International registrations that are the result of separate international registration applications cannot be merged.
The handling of EU extensions of protection in the post-Brexit era has been copied into UK national registrations
Following the conclusion of the Brexit transition period on January 1, 2021, all international registrations that had been awarded EU extensions of protection as of that date were automatically cloned into UK national registrations, keeping the previous EU right’s registration or priority date. However, for those EU extensions of protection that were still subject to the five-year dependency period at the time of Brexit, the question arises as to whether the home country filing that is the basis of the international registration form which the cloned UK national registration was derived is later revoked in whole or in part. No, it doesn’t work that way. The UK Intellectual Property Office will delete the copied UK right from its registry if the EU extension of protection ceased to have effect before the Brexit date but had simply not been registered by the WIPO or the EUIPO. However, if the cessation of effect occurs after the Brexit date, the UK cloned right will be unaffected since it is an entirely independent UK registration at that time.