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The Madrid Protocol: Key Benefits, Risks and Strategies

The Madrid Protocol: Key Benefits, Risks and Strategies. 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. What is the Madrid Protocol?.

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The Madrid Protocol: Key Benefits, Risks and Strategies

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  1. The Madrid Protocol: Key Benefits, Risks and Strategies

  2. 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

  3. What is the Madrid Protocol? Allows for: • Simplified international filing system • Simplified renewals, assignments, and recordals • Three official languages

  4. What is The Madrid Protocol? Members of the Madrid Protocol: • Over 80 contracting parties • Visit www.wipo.int for updated list

  5. Who May Use the Madrid Protocol? Any person who: • Has a real and effective industrial or commercial establishment in a contracting party; • Is domiciled in a contracting party; • Is a national of a contracting state; or • Is a national of a state member of a contracting organization.

  6. Effects of the International Registration • A bundle of national / regional rights • Initially with same list of goods / services • WIPO may object to wording of goods / services before IR is sent to national offices • Further objections / refusals possible on national level

  7. Advantages of the Madrid Protocol • Centralized filing procedure • Potentially significant savings

  8. Advantages of the Madrid Protocol • Simplified filing requirements • Simplified maintenance

  9. Advantages of the Madrid Protocol • Transformation into national filings

  10. Risks of the Madrid Protocol Central attack and mirror effect: • IR mirrors home application / registration • Attack on home mark within first 5 years of date of IR results in same limitation / cancellation of protection in countries designated under IR • IR does not become independent of home registration until after five years

  11. Risks of the Madrid Protocol • Requirement for assistance of local agent if objections arise during prosecutionor in the context of opposition proceedingsmay reduce savings

  12. Searching Strategies Minimum recommended: • Full availability search – before filing in home country, todetermine if the trademark appears available for use and registration • Screening search – direct hit / identity search in each other country of interest

  13. Filing Strategies • Coined expressions are preferable, as more likely to be inherently registrable • Descriptive / generic terms may result in objections and eliminate the cost saving advantage

  14. Filing Strategies • Consider waiting for home application to clear opposition period before filing international application (risk of central attack) • If applicant requires single brand in all designated countries,multiple potential marks are recommended because unlikely thatone mark will be accepted everywhere

  15. Filing Strategies • May not want to use European Community trademark application as home application (heightened risk of opposition) • US applicants may prefer national or regional route in order to expand scope of protection of mark (more limited base mark)

  16. Additional INTA Resources • For more information, visit Global Trademark Research on www.inta.org for: • Practitioner’s Guide to the Madrid Agreement and Madrid Protocol • Madrid Protocol and Community Trade Mark and the Madrid Protocol Comparison fact sheets • Madrid System Topic Portal

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