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When filing a trade mark, it is essential you consider whether the Madrid Protocol is a suitable option. The Madrid Protocol is a treaty by the World Intellectual Property Organisation (‘WIPO’). Currently, around 126 countries are members of the Madrid Protocol. Filing through the Madrid Protocol allows you to nominate the member countries that interest you within a single WIPO application. This pathway may or may not be most suitable for your particular situation. This filing option has benefits and disadvantages, so you should consider your priorities and business goals before filing.
Benefits
Cost-Effective
One of the greatest benefits of filing through the Madrid Protocol is that it is usually a cheaper option overall. Additionally, it is economical if you plan to expand your business venture to offer your goods and services in many different countries. This is especially relevant for businesses that offer software goods or mobile applications. This is because these, by their very nature, can be accessed by users all around the world.
The electronic permeability of international borders creates a real risk that you could be exposing your brand to overseas copycats if you do not take steps to register your trade marks in each of your target markets internationally. Consequently, incorporating multiple countries into one application can be more cost-effective and reduce filing fees overall.
Ability to Subsequently Designate
The Madrid Protocol pathway can also be attractive if you are unsure how far your customer client base may reach but have goals to expand beyond one or two international countries. This is because you can subsequently designate further member countries at any point in the future. This is subject to payment of further official fees. Doing so allows you to expand protection into new markets in a streamlined and cost-effective manner.
Streamline Your International Portfolio
When you apply through the Madrid Protocol, you will be issued a single International Registration number. Additionally, your trade mark will appear on the Global Brand Database. This one centralised registration system can help streamline your international trade mark portfolio management. Specifically, through a single WIPO request, you can easily address:
- renewals;
- assignments; and
- other changes.
Disadvantages
Requirement For ‘Base’ Application
A Madrid Protocol application must be ‘based’ upon an application in your ‘home’ country or your ‘country of origin’. As a result, to apply through the Madrid Protocol, you must first have a:
- trade mark registered in Australia; or
- pending application on foot in Australia.
This may be a disadvantage where you do not have an Australian trade mark registration or pending application. For example, suppose you live in Australia but only offer your goods and services for sale overseas. Additionally, your Madrid Protocol application may be subject to a centralised attack within the five-year‘ dependency period’.
In addition, to be eligible to use your Australian registration or application as a base for your Madrid Protocol application, you must:
- have a real and effective industrial or commercial establishment in Australia;
- be living in Australia; or
- be an Australian national.
If you hold an Australian registration or have recently filed an Australian application, but do not meet any of the requirements above, you will not be able to use your Australian registration or application to file via the Madrid Protocol. The trade marks office of another country would likely be considered your ‘office of origin’. Accordingly, you must use that office for filing an international application.
Timing
Filing via the Madrid Protocol can become a lengthier process than filing directly to each of your target countries. A Madrid Protocol application is first sent to the trade mark office in your ‘base’ country for certification. Following this, it is sent to WIPO for registration. This process can take up to three months. Finally, your application is sent to each country’s trade mark office for examination. In effect, the formal examination process in each country is delayed by approximately 3 months, depending on the backlog of applications at WIPO.
Rest assured that you will still be assigned the same priority/filing date in each designated country, despite this slight delay in the formal examination.
Not All Countries Are Members
Not all countries are parties to the Madrid Protocol. For example, Hong Kong has yet to be a party to the protocol. However, they are likely to implement it within the next few years. The only option for non-member countries is to apply directly to their trade mark offices. This usually requires you to appoint a local representative to file your application on your behalf.
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Key Takeaways
If you want to obtain coverage for your brand in multiple international countries, applying through the Madrid Protocol pathway is cost-effective and streamlined. This can be especially useful if your core product or service is a mobile application or Software.
However, a Madrid Protocol application is ‘based’ on the application in your country of origin. Accordingly, you will need to take steps to register your trade mark in Australia before applying overseas. This application pathway can become lengthier. Thus, it may be unsuitable if you want to focus on and fast track the overseas registration process.
It is best to speak to a trade mark lawyer to help you navigate international filing to determine which filing option is most suitable. Our experienced IP lawyers can help as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
The Madrid Protocol is an international treaty allowing for an international intellectual property registration system.
The Madrid Protocol may be suitable for you depending on your business goals and circumstances. Generally, the Madrid Protocol route may be suitable if you intend to register your trade mark in multiple countries or have plans to expand your business in the future. However, it is best to speak to an IP lawyer to determine whether it is suitable for your commercial interests.
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