The online era has created an easy pathway for businesses to develop a multi-country market for their products. However, global market development should go hand in hand with global protection for the rights of business owners – particularly their trademark rights. Business owners need to find an easy and cost-efficient way to register their trademark in multiple countries. The Madrid International Trademark Filing System (Madrid System) can be the solution to this need. Let’s understand the Madrid System basics.
What is the Madrid System?
The Madrid System is an international trademark filing system. It allows trademark owners to seek protection for their mark in multiple countries, simultaneously. They can do this by filing a single application through the International Bureau of the World Intellectual Property Organization (WIPO).
Benefits of the Madrid System
The number of applications filed through the Madrid System is rapidly increasing. By November 2019, approximately 1.5 million international registrations have been recorded through the Madrid System. The increasing popularity of this system is due to a few benefits that make it very appealing for trademark owners such as:
1. Global nature
With three new members joining in 2019, i.e. Canada, Brazil and Malaysia, there are currently 122 countries covered by the Madrid System. Among the ASEAN countries, only Myanmar has not acceded to the Madrid Protocol. This is, of course, good news for business owners focusing their business developments on ASEAN countries.
2. Simple and convenient
The Madrid System provides a simple and convenient option for trademark owners to file their trademark application in many countries, through a single application. At a later stage, they can also easily expand the protection of their international registration as they enter more markets.
Furthermore, changes to an international registration, such as change of name/address, assignment, and even renewal can also be done through a single centralised process.
Since all Madrid System trademark applications are filed through WIPO, the system is very cost-efficient, as the applicants do not need to seek the assistance of an IP agent in each and every country they would like to obtain trademark protection in. Furthermore, since the applications are filed in one language, the applicants can save on translation costs as well.
Is the Madrid System for you?
Despite the aforementioned benefits, filing trademark applications through the Madrid System may not be the answer for all trademark owners. There are some factors that need to be taken into consideration before deciding to file an international registration, such as:
1. Eligibility and home registration
The international registration must be filed based on home registration from one of the member countries of the Madrid Protocol. Furthermore, only nationals or companies which are established in the member countries of the Madrid Protocol, or business owners who have a real and effective business presence (commercial establishments) in these member countries can file their trademark application through the Madrid System.
2. Available countries
The applicant can only designate member countries of the Madrid Protocol in their international registration. Thus, if most of the countries of interest are not members of the Madrid Protocol, the cost savings may not be that significant.
The details of the international registration in the designated countries should mirror the details of the home application. Those details cannot be modified to meet the local practice in each designated country. Hence, the chances of receiving objections from local trademark registries would be higher. When an objection is raised by the registry in the designated country, the applicant will have to appoint a local trademark agent to assist with responding to the refusal. In such a case, additional costs will be incurred, and it may defeat the cost-saving purpose of filing international registrations.
4. Central attack
International registrations are dependent on home registrations until after five years from the international registration date. This means, if the home registration is refused, invalidated or cancelled within those five years, the international registration in the designated countries becomes invalid as well. This is called ‘central attack.’ Depending on the risk for the trademark to be objected and refused in the home countries, it is critical to establish a filing strategy to minimise the risk for the trademark filings in the other jurisdictions to be refused as well.
At IPHub Asia, we help businesses secure trademark protection. Contact us to learn more about the Madrid System basics and to know if it could suit your business needs. You can also visit our website to learn about the IP services we offer.