The Madrid Protocol:Key Benefits, Risks, and Strategies

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The Madrid ProtocolKey Benefits, Risks, and
Strategies
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What is the Madrid Protocol?

• International Treaty administered by WIPO.
• Simple vehicle to obtain and maintain
  registration of trademarks in multiple
  jurisdictions through a single trademark office.

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What is the Madrid Protocol?

• Allows for
• Simplified international filing system.
• Simplified renewals, assignments and recordals.
• Three official languages.

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What is the Madrid Protocol?

• Members of the Madrid Protocol
• 75 contracting parties (as of October 16, 2007).
• Visit www.wipo.org for updated list.

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Who may use the Madrid Protocol?

• Any person who has
• A real and effective industrial or commercial
  establishment in a contracting party, or
• is domiciled in a contracting party, or
• is a national of a contracting state or
• is a national of a state member of a contracting
  organization.

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Effects of the International Registration

• A bundle of national/regional rights
• Objections/refusals

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Advantages of the Madrid Protocol

• Centralized filing procedure
• Significant savings

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Advantages of the Madrid Protocol

• Simplified filing requirements
• Simplified maintenance

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Advantages of the Madrid Protocol

• Conversion

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Risks of the Madrid Protocol

• Mirror effect international application mirrors
  the home application/registration.
• Central attack attack on the home application
  or registration within the first 5 years
  following the date of the international
  registration affects protection in the designated
  countries covered by the international
  registration.

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Risks of the Madrid Protocol

• Assistance of local agent may reduce savings

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Searching Strategies

• Minimum
• Availability search before filing in the home
  country, determine if the trademark is available
  or if it is currently in use.
• Screening search direct hit/identity search in
  each of the countries of interest.

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Filing Strategies

• Coined expressions are preferable.
• Descriptive/generic terms may result in
  objections and eliminate the cost saving
  advantage.

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Filing Strategies

• Minimum wait for the opposition period of the
  home application to be over before filing
  international application.
• Multiple potential marks should be filed because
  not all will go through in all designated
  contracting parties.

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Filing Strategies

• May not want to use the European Community
  trademark application as the home country
  application.
• US applicants may prefer national or regional
  route in order to expand scope of protection of
  mark.