29 Jul
2021

Madrid Protocol – recent developments and practice tips

The Madrid System, which is administered by the WIPO, is a cost-effective option for trademark owners who want to obtain trademark rights in many important commercial jurisdictions quickly and efficiently by securing an international registration in accordance with the provisions of the Madrid Protocol (which all Madrid members have now joined) and the provisions of the Madrid Agreement. The primary relevance of the Madrid Agreement is that trademark owners in countries that belong to both the protocol and the agreement can often pay lower official fees for extensions of protection to countries that also belong to both treaties. They can also benefit from having their extensions of protection examined within a shorter 12-month refusal period rather than the 18-month refusal period provided for in the Madrid Protocol. Only about half of the Madrid System members belong to both treaties.

How to best take advantage of the Madrid System

To understand how to best take advantage of the Madrid System it is vital to understand how it works, so we shall begin with a review of the basics.

A trademark owner must file a trademark application in its home country (ie, where it is a national or where it is domiciled or has a real and effective commercial establishment), as that application then provides the basis for filing an international registration application under the Madrid System. The application must be filed in the applicant’s home country patent and trademark office, which examines it for formal requirements and then forwards it to the WIPO for further processing. The WIPO examines the application primarily to confirm that the goods and services are correctly specified and classified and that the requisite fees have been paid, and then issues an international registration and notifies the patent and trademark offices in the extension countries where protection is requested. The extension countries have 12 months (if the agreement rules govern) or 18 months (if the protocol rules govern) to examine the request for protection and:

  • approve it by issuing a grant of protection;
  • object to it by filing a provisional refusal; or
  • take no action whatsoever.

Where no action is taken, the WIPO will deem the extension of protection to have been granted once the relevant 12-month or 18-month refusal period has expired. If a provisional refusal is issued, the WIPO forwards this to the trademark owner or its international registration representative agent who must then typically hire local counsel to resolve the relevant issues so that the international registration extension can either be finally accepted or refused. Many countries rely on the publication of the grant of the international registration for opposition purposes, so it is important to carefully scrutinise watch notices for those opposition dates. However, many other countries republish international registration extensions for opposition purposes in their own gazette and will notify the WIPO that an extension has been preliminarily approved subject to any opposition that may be filed.

Once the international registration extensions are deemed granted in the Madrid extension countries, they have the same legal force and effect as national registrations. However, the validity of these extensions initially remains dependent on the continuing validity of the home country filing that is the basis of the international registration. So, if the home country filing suffers a final refusal, in whole or in part, within five years of the issuance of the international registration, the international registration coverage will be revoked to that extent once the WIPO is notified. However, at that point the trademark owner has three months to file transformation applications in the international registration countries of interest to retain protection for the revoked coverage.

The WIPO can also raise objections to an international registration application, usually due to the applicant’s failure to pay the required fees or due to the WIPO’s determination that the goods and services specified are either vague or misclassified. The WIPO’s objection will be issued as a notice of irregularity that is usually sent to the applicant through the home country patent and trademark office in which the international registration application was filed. The applicant has three months to respond. Applicants who use the Madrid System frequently set up a deposit account with the WIPO to pay the official fees, which must be funded in Swiss francs, the currency in which the WIPO operates and sets its fees. US applicants who have a USPTO deposit account may also specify at the time that the international registration application is filed that any fees due to the WIPO be paid from their USPTO deposit account. As for the specification of goods and services, the international registration applicant’s response to the notice of irregularity must typically be filed with the home country patent and trademark office, which must certify that the amendments made to overcome the WIPO’s objections do not extend beyond the scope of the international registration basis applications before forwarding them to the WIPO. Once the issues raised in the notice of irregularity have been resolved, the WIPO will issue the international registration.

If international registration applicants later decide that they want to extend their existing registration to additional countries for one or more of the existing classes of interest, they may do so by filing a subsequent designation with either their home country patent and trademark office or with the WIPO directly. The effective date of the coverage for such additional countries and classes will be the date that the request for subsequent designation is filed with either the WIPO or the home country patent and trademark office, as long as it is forwarded to the WIPO in a timely manner. However, a subsequent designation cannot be filed to add additional countries until the international registration issues to registration. This can take several weeks, or even several months if the international registration application encounters a notice of irregularity from the WIPO. For this reason, at the outset, international registration applicants should carefully consider the countries and classes that they want to include, especially if they are approaching the six-month convention priority deadline and want to claim priority. If, after the international registration application is filed, an applicant facing a close priority deadline wants to add countries before the convention priority deadline expires, the only option is to file another application specifying such additional countries.

Important practice tips given recent developments

New Madrid members

In the past 10 years, commercially important countries such as Brazil, India, Mexico, Indonesia, Philippines, Malaysia and Thailand have acceded to the Madrid Protocol. However, trademark owners who want to consolidate their rights in these countries by extending their existing international registrations to these new Madrid members through the filing of subsequent designations must be careful. Some of these countries, specifically Brazil (2019), India (2013) and Philippines (2012), indicated when they joined the protocol that they will only accept subsequent designations of international registrations issued after they joined the Madrid System.

International registration fees

For virtually all countries in the Madrid System, the fees for securing an international registration must be paid at the time that the international registration application is filed. The fees consist of any fees that the applicant’s home-country patent and trademark office charge, as well as the WIPO international registration processing fee and the individual fees for covering the countries and classes specified in the international registration application. The WIPO site has a handy fee calculator to assist applicants in determining the fees owed (https://madrid.wipo.int/feecalcapp/). For most international registration countries, the fees paid at the outset are sufficient to secure protection in the extension countries as long as no provisional refusals are issued. However, the Madrid Protocol permits international registration countries to elect to receive their individual fee in two parts: one at the time that the international registration is filed, and the other when that country issues a grant of protection. The following countries have chosen this option:

  • Japan;
  • Brazil; and
  • Cuba.

International registration applicants should watch for notices from the WIPO indicating that the second part individual fee is due once their international registration extension has been granted in these countries. Failure to pay this second fee in a timely manner will result in the international registration extension lapsing in that country.

New requirement to provide international registration owner’s email address

Due to the disruptions in the postal service as a result of the covid-19 pandemic, as of February 2021, the WIPO instituted a requirement that all international registration applicants, and their international registration representative agents, if any, provide an email address. Email addresses must also be provided when recording a change in ownership. The new rule also requires that the international registration applicant’s email address must not be the same as the international registration representative agent’s email address. The WIPO has confirmed that if the applicant has appointed a representative, the applicant’s email address will not be made public and that all communications will be sent to the appointed representative, except for renewal reminders or notices cancelling the representative agent.

Recordal of changes in ownership

One advantage of the Madrid System is the ability to record a change of ownership by filing a single form with the WIPO that notifies the extension countries of the change. As many new countries join the system, trademark owners are finding that they have a patchwork of national filings and international registration extensions of protection for similar marks in many Madrid countries. This can create problems when recording changes in ownership because many national offices take several months to record such requests, while the WIPO usually processes them fairly quickly. As a result, the WIPO request to record a change in ownership can be rejected by a national office due to citation of national registrations for similar marks against which a corresponding ownership change has not yet been recorded by the national office. This happens frequently in China but can happen in other Madrid countries too. Trademark owners facing this risk should consult with local counsel regarding the best way to coordinate the timing of the submission of the change in ownership requests so as to avoid any refusals.

Division and merger of international registrations

Many trademark owners file international registrations in multiple classes and are concerned that a citation or opposition against part of their coverage could prevent their entire international registration extension from being granted in a given country. Some countries will grant the coverage that is not objected to or opposed while the trademark owner works to resolve the refusal against the remaining coverage, but many do not. For this reason, the Madrid System implemented a new procedure in February 2019 that permits trademark owners to divide up the refused coverage from a multi-class international registration extension of protection in a given jurisdiction so that the remaining coverage can proceed to registration. If and when the relevant issues are resolved so that the refused coverage is then granted, the new WIPO procedure permits the trademark owner to request that the now accepted coverage be merged back into the original international registration, meaning that the relevant rights are once again consolidated into one international registration. This is a welcome development, but unfortunately many Madrid member countries have opted out of this new procedure for either merger or division because their domestic legislation does not permit it.

It is always possible to merge an international registration resulting from a partial change in ownership, provided that the owners of the international registrations to be merged are the same. However, this is possible only where two or more international registrations were initially separated from the same international registration. It is not possible to merge international registrations that originate from separate international registration applications.

Post-Brexit treatment of EU extensions of protection cloned into UK national registrations

Following the end of the Brexit transition period on 1 January 2021, all international registrations that had EU extensions of protection that had been granted as of that date were automatically cloned into UK national registrations, retaining the registration or priority date of the prior EU right. However, for those EU extensions of protection that were still subject to the five-year dependency period at the time of Brexit, if the home country filing that is the basis of the international registration from which the cloned UK national registration derived is later revoked in whole or in part, the question arises as to whether that has any impact on the validity of the cloned UK national registration. The answer is that it does not. Specifically, if the ceasing of effect of the EU extension of protection occurred before the Brexit date, but had simply not yet been recorded by the WIPO or the EUIPO, then the UK Intellectual Property Office will remove the cloned UK right from its register. However, if such ceasing of effect occurred after the Brexit date, it will have no impact on the UK cloned right as it is a fully independent UK registration at that point.

Nadine H Jacobson

Partner | Fross Zelnick Lehrman & Zissu PC

[email protected]