IP Insights
Trade Mark Registration via the Madrid Protocol and Its Downfalls
By
James Leslie-Watt
The Madrid System is administered by the World Intellectual Property Organisation (WIPO). Under the Madrid System, you can register and manage protection of your trade mark in multiple countries at the same time in one application. However it has some pitfalls you may not be aware of.
Introduction
The Madrid System is administered by the World Intellectual Property Organisation (WIPO). Under the Madrid System, you can register and manage protection of your trade mark in multiple countries at the same time in one application. You can apply in over 128 countries through the Madrid System.
The Madrid Protocol for trade mark registration has a number of clear benefits, most obviously that it is often substantially cheaper than filing direct national applications when protection is to be sought in more than a few territories. Many applicants will take a view that this offsets the potential difficulties, some of which are described below. Nevertheless, when seeking protection in some countries (particularly the US and China) the Madrid Protocol has significant limitations.
In some circumstances, it may be difficult to control problems arising from errors or mistakes of intermediary agencies (eg. IB) during the international registration process, such as confusing the applied-for mark as a conventional trademark instead of a certification mark/collective trademark. The Madrid system generally does not have a mechanism to allow rapid information exchange between IB and the applicant in order to quickly correct such errors/mistakes, which may give rise to new complex situations such as unexpected refusals of protection, or it is possible that the trademark is wrongly granted protection as a common trademark, therefore it is to go back to the process of examination in the form of certification trademark/collection trademark in accordance with those designated countries’ laws as the designated countries had been inaccurately informed about type of trademark applied for. By using a qualified Trade Mark Attorney in Australia they will most likely have a relationship with another attorney such as in the US or China where you have a higher chance of success and more control over the registration and opposition process.
Dependency on base application/registration
For five years from the date of the international registration, the protection resulting from the international registration is dependent upon the basic application(s)/registration(s).
This means that if (i) a basic application is refused or withdrawn in whole or in part, or (ii) a basic registration (or a registration resulting from the basic application) is cancelled, lapsed or surrendered in whole or in part, within five years of the date of the international registration (or as a result of an action commenced within the five year period), the international registration will be cancelled in all contracting parties to the corresponding extent. It may be converted to direct national applications, but this is expensive.
In order to avoid the risk of losing protection in all designated contracting parties if a basic application is rejected, it is preferable to base an international registration on a registration rather than an application, where possible.
Variations in law
Madrid Protocol registrations may cover many territories and as they are filed without seeking advice from local attorneys in each country (which greatly reduces their cost), they are at risk of receiving unexpected objections which would have been avoided by the direct filing route.
Some territories, notably the United States, allow only limited specifications of goods and services which are significantly narrower than would usually be used in the UK and many other territories. Accordingly there are frequently specification objections in the US which incur costs to address.
Lack of registration certificate
Many Madrid Protocol designated states do not issue registration certificates except perhaps on request (e.g. China) and this can delay enforcement when required.
Short deadlines to respond to objections
In some territories objections raised by national offices (e.g. China) have very short response deadlines. Within that period of time we require to receive the objection, which is not always prompt, discuss how to respond (if required) without our client and usually to seek advice from and/or instruct local attorneys, who will often require a power of attorney to be completed. This short timescale frequently presents a problem.
Inflexibility
The Madrid Protocol does not provide for the filing of divisional applications. This means that if you receive an objection in one class, there is no way to proceed to registration in other classes until the objection is addressed. In many territories it is not possible to move goods or services between classes to address classification objections which occasionally leads to a loss of scope of protection.
A number of issues apply to the United States, for example an application under the Madrid Protocol designating the US may only be on the basis of "intention to use" and not other bases, such as "actual use" which would usually be preferable, where appropriate.
Enforcement difficulties
The Madrid Protocol is not fully enshrined in law in all territories which are signatories, for example Madrid Protocol registrations covering OAPI are not enforceable in all states.
Extended timescales
Although registration under the Madrid Protocol may be faster than national registration procedures in some territories, there are other territories (e.g. the UK and the EU) where it is a good deal slower than direct national applications. Although the process should generally be complete within 18 months of an application having been filed sometimes there is an opposition period which extends well beyond this date.
Central Attack
Central attack is a legal action allowing a third party to invalidate an opponent's registered trademark in all the designated countries with a single opposition/cancellation action filed with the trademark office in the country of origin instead of filing multiple opposition/cancellation actions against the international registration in each designated country.
The Madrid-based trademarks may be at risk from “central attack” threats by third parties (competitors) because protection resulting from the international registration in all designated countries shall be no longer valid, if the basic trademark (under a basic application or basic registration) is cancelled, invalidated or rejected within five-year period from the date of international registration due to any reasons including those of successful cancellation or opposition actions before the country of origin’s IP office. According to the Berkeley Technology Law Journal, central attacks appear to have grown rapidly in recent years, ie. from just 200 total or partial cancellations in 1996 to 7,000 cancellations in 2017 alone. According to WIPO statistics, in 2013 the EUIPO confirmed 600 notices of ceasing of effect, of which 357 international registrations were revoked by reason of central attacks.
No accord for three dimensional marks, non traditional marks
The Madrid system does not accord with basic trademarks that are three-dimensional marks or non-traditional marks (eg. sound marks) because there would have a high risk of rejection in the country of origin. For instance, assuming that the following 3-dimensional trademark under a basic application filed in Vietnam, protection originating from the international registration will be terminated as a consequence of the "central attack" principle since this shape mark within 5 years will be probably rejected by the VNIPO (Vietnam) on the grounds that this 3-D mark would be considered as the normal shape of the product, devoid of distinctive character by Article 74(2)(b),(c) of the Intellectual Property Law. Upon ceasing of effect by the central attack, there would arise costs and time to request transformation of the international registration into various national registrations.