Businesses are often looking for convenient and cost-effective solutions to register and manage their international trademark registration. The Madrid Protocol is one way to do this, allowing you to apply for trademark protection in up to 124 countries with a single application. It is a centralized system that allows us to change, update and expand our global portfolio of brands. The following article highlights important aspects of this protocol that you need to know.
What is the Madrid Protocol?
An international trademark registration system sponsored by the World Intellectual Property Organization (WIPO). The International Register offers a range of rights that are centrally administered by the WIPO in Switzerland. The
Madrid Protocol is actually an updated version of the system known as the Madrid Agreement. Signatories to the Madrid Agreement joined the Madrid Protocol on 31 October 2015 and now supervise all international applications and registrations. This agreement is now redundant as no work has been done under it.
trademark protection under the Madrid System can only be purchased by the countries and territories that belong to it. The diagram below shows the three territories that can be designated in international registration under the Madrid Protocol.
Who can apply for registration of a trademark under the Madrid System?
Any UK company or national may apply for international registration if there is a UK application or registration. Apart from that, you can use the Madrid System to register your trademark if you have a personal or business relationship with one of the members of the system. This means that the applicant “must be a resident. He must be a citizen of one of the 124 countries that make up the 108 member states of the Madrid System, either having an industrial or commercial establishment in one of the member states.” It can also be used by those who have applied for or registered a trademark in member countries/regions.
Fees for international trademark registration and color mark registration can be found here. In addition to the basic price, there are additional charges depending on the country of protection and the class of goods and services.
Advantages of the Madrid Protocol
Low Cost: The cost of registering a trademark under the
Madrid System is certainly lower than applying for registration individually in each Member State. However, as mentioned above, the cost will vary depending on a number of factors, including the country of designation.
Savings on Attorney Fees:
The Madrid System will process all national applications unless objected. This leads to further cost savings as companies do not have to hire a separate local lawyer. However, some countries require this even if there is no objection to the application.
In some countries of the Madrid Protocol, trademark protection can be obtained faster than through the domestic route. This is because the system prescribes and adheres to strict deadlines for the registration process.
Centralized System: Under the
The international system, name changes, transfers, etc. Centrally through WIPO. This procedure therefore saves costs as opposed to recording such events separately for each Member State.
Protection against loss of rights:
international registrations may replace corresponding national/regional registrations without loss of rights. Conversely, if they are filed separately, they may affect national or regional registrations.
Allow additional countries:
Once the applicant has received their registration, they may nominate additional ‘Contracting States’. A request for correction can be submitted to her WIPO using the post-naming system.
Disadvantages of the Madrid Protocol
Effects of National Application:
If an applicant’s countrywide software loses impact in complete or in part, within 5 years from the date of global registration, the Madrid Protocol registration stands canceled to the equal extent.
Greater Cost of National/Regional Application:
If the above-referred to state of affairs arises, then it’s far more viable to report countrywide/local programs having equal coverage, claiming a date again to that of the global registration. In any such scenario, the entire price will then be alternatively more in assessment to the scenario.
Issues While Designating Country:
Before it could be assumed that safety exists in a u. s. a. (due to the fact a few international locations nevertheless do now no longer suggest that they’ve generic a designation), it must be assumed that the trademark is included in the applicable time for advising of refusal has expired and no refusal has been advised.
The foremost goal at the back of introducing the Madrid Protocol became to make the machine of trademark registration extra convenient. This is due to the fact each place or u. s. a. follows various machines for the equal. Since the manner of software may be complex, corporations should not forget to search for help from trademark carrier vendors for trademark submitting and searching. The due diligence can assist them to store money and time whilst making use of global trademark registration.
Sagacious IP’s trademark submitting offerings are designed to provide quit-to-quit help to agencies with trademark software and prosecution manner in India and globally. Our trademark experts are adept at helping you with the registration manner.