Since the UK’s departure from the EU, the Madrid Protocol has become a popular method of filing trade mark applications in foreign jurisdictions.
The Madrid Protocol is an international treaty between contracting countries, which includes the EU, USA, China and Japan (among others). A full list of the Madrid Protocol contracting countries can be viewed on the World Intellectual Property Office (“WIPO”) website.
The Madrid system is a centralised process whereby trade mark applications can be filed in multiple jurisdictions via one centralised form. The international application will be based on the owner’s basic mark which is filed in its own national trade mark office.
The international trade mark application is initially filed at the owner’s national trade mark office (in the UK, this is the UK IPO) and then sent on to WIPO. Once WIPO has checked certain formalities, it will publish the application in the WIPO Gazette of International Marks and forward the application on to the trade mark office of each country designated in the international trade mark application. The application will then be reviewed by the relevant trade mark office in accordance with its own local laws.
The main risk of filing an international application through the Madrid system is central attack. This means that if your basic application in the owner’s national trade mark office is cancelled or abandoned within the first five years, then all the international applications will be subsequently cancelled.
The key benefits of filing an international trade mark application via the Madrid Protocol are as follows:
- Simplicity. The application can be filed in multiple jurisdictions through one central form;
- Time. It is much quicker to use one solicitor to process a single application, covering multiple jurisdictions, on your behalf;
- Costs. It is often cheaper to file one international application through the Madrid system than to file several applications (and pay individual filing fees and legal fees) in separate countries direct;
- Single Payment. You will be required to pay the filing fee in Swiss Franc (CHF) and will therefore only have to incur one currency conversion; and
- Portfolio Management. It is much easier to manage a portfolio which comprises of a single international registration, covering multiple countries, compared to lots of individual national registrations.
In summary, if you are planning to expand your business to jurisdictions outside of the UK and want to ensure that your brand name is suitably protected, the Madrid system may offer a fast and cost effective way to achieve this objective.
Get in touch
If you would like to discuss any of the issues raised in this article, or you would like assistance with filing an international trade mark application, Rebecca Anforth (Legal Director), would be delighted to hear from you. You can reach Rebecca on 07984692100 or you can email her rebecca.anforth@murrellassociates.co.uk.
The information provided in this article is a summary for general information purposes only and does not constitute legal or other professional advice and cannot be relied on as such. Any law quoted in this article is correct as at the above date. Appropriate legal and financial advice should be sought for specific circumstances before any action is taken.
