The Madrid Trade Mark System

Jan VleckPartner, Reddie & GroseLondon and Cambridge

AIPPI in Hyderabad - 2011

The Madrid System

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

Madrid Agreement Concerning the International Registration of Marks.- “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?

Structure

Trade Mark Registrations are National rights 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.

WIPO

International trade mark applications are handled by the World Intellectual Property Organisation (WIPO).

WIPO acts as a middle-man between the applicant and National and Regional Trade Mark Offices.

Which countries can an International application lead to?

Who can apply?

Only those entitled by virtue of a relationship with a Member country (Country or Origin).

Madrid Agreement.

- Cascade1. Country where applicant has a real and effective effective

industrial or commercial establishment.

2. Country where the applicant is domiciled.

3. Country of which applicant is a national.

Madrid Protocol.

- Same bases 1, 2 and 3, but applicant can choose.

Where can you apply?

Entitled in a Madrid Agreement member country?- 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).

Procedure 1

Madrid Protocol application must be filed at the Trade Mark Office of the Country of Origin.

Based on a “home” registration or application in the Country of Origin.

Application sets out:Trade Mark.Goods and Services.Applicant.Applicant’s entitlement to file.Home application or registration.At least one designation.

In an official language of Madrid Protocol: English, French, Spanish.

Procedure 2

The Office of the Country of Origin certifies certain particulars of the application:- 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 3

WIPO checks the application for formal deficiencies, and the list of goods and services for clarity and classification.

WIPO has the final say on the form and classification of goods and services.

WIPO collects official fees.

Fees

Basic fee. And:

- Complementary fee for each designation.- Supplementary fee for each class over 3.OR- Individual fees.

Some countries require the Complementary fee.

Others set Individual fees; these cannot exceed their fees for a National or Regional application.

Procedure 4

When WIPO procedure is complete, WIPO;- Registers the mark in the International Register,

- Publishes details in the International Gazette,

- Issues Registration Certificate; and

- Notifies Offices of designated Contracting Parties.

(151)04.01.2002

772678(180)04.01.2012(171)10(732)JOHN LEWIS PLC

171 Victoria Street,LONDON, SW1E 5NN (GB)

(812)GB(842)Public Limited Company United Kingdom(740)Linda J Harland

C/o Reddie & Grose

16 Theobalds RoadLondon WC1X 8PL (GB)

(540)JONELLE(511)24Textiles 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. (822)GB, 15.02.1956, 750993 (832)AT, GR, IE, NO, PT   

Procedure 5

Offices of Contracting Parties then have 12 or 18 months to raise any objections.

Each Office examines the application according to its normal procedures;

- Trade Mark Office examination.

- Publication.

- Third Party Opposition period.

If no objections arise, some Offices of Contracting Parties tell WIPO, who tell the applicant.

Procedure 5

If objections arise, the Office of the Contracting Party sends a “Notification of Provisional Refusal” to WIPO, setting a response term.

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 6 (and last)

If applicant overcomes objections and/or oppositions, then a Registration is granted in that country/region.

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.

Other Features 1

Adding Designations- 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 2

Dependency and Central Attack- 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.

Features 3

Centralised Procedures- Renewal fee payment.

- Change of name recordal.

- Assignment recordal.

- Licence recordal.

Why use it?

Pro’s: - Simplicity - if no objections are raised.

- requires good advice.- Single application.- Centralised register and renewals.

Con’s: - Complexity - if objections are raised.- Central attack.- Home country is outside International Registration

- Dependence on home country practice.

Costs

Low, if no objections are raised, but not as low as applicants might wish.

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.

How Successful is the Madrid System?

1892 Madrid Agreement

1880’s Invention of the motor car.1890’s Invention of the radio.1897 Ahmedabad telephone service started.1900’s Invention of the aeroplane.1900’s Founding of Reddie & Grose.

1978 Patent Cooperation Treaty1996 Madrid Protocol

How Successful is the Madrid System?

Madrid Agreement 56 members

Madrid Protocol 84 members

Patent Cooperation Treaty 138 members

Is it a Good Thing?

An International Trade Mark Registration System sounds great.

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?

Thank you

Any Questions?

Jan Vleck, Reddie & Grose