The Madrid Trade Mark System Dr Simon Goodman Partner, Reddie & Grose London and Cambridge

Reddie & Grose - 17 Partners -European Patent Attorneys. -European Trade Mark Attorneys. -Chartered Patent Attorneys. -Registered Trade Mark Attorneys.  Based in London and Cambridge

The Madrid System  What is it?  How does it work? The nuts and bolts.  Why would you use it?  Why wouldn’t you use it?  Is it a good thing? And when will India join?  Questions / Discussion.

The Madrid System  Madrid Agreement Concerning the International Registration of Marks. -“The Madrid Agreement”. -Concluded 1891; Came into effect  Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. -“The Madrid Protocol”. -Concluded 1989; Came into effect  India Joins Madrid Protocol 2008?

Structure  Trade Mark Registrations are National rights  Community Trade Mark is an exception to this. -CTM registration is a unitary right covering the entire EU, overlapping with National Rights.  Madrid System leads to International Registrations. -These are not enforceable rights. -But bundles of National or Regional registrations.

WIPO  International trade mark applications are handled by the World Intellectual Property Organisation (WIPO).  WIPO acts as a middle-man between the applicant and National and Regional Trade Mark Offices.  Which countries can an International application lead to?

Who can apply?  Only those entitled by virtue of a relationship with a Member country (Country or Origin).  Madrid Agreement. - Cascade 1.Country where applicant has a real and effective effective industrial or commercial establishment. 2.Country where the applicant is domiciled. 3.Country of which applicant is a national.  Madrid Protocol. - Same bases 1, 2 and 3, but applicant can choose.

Where can you apply?  Entitled in a Madrid Agreement member country? -can file an application under the Agreement.  Entitled in a Madrid Protocol member country? -can file an application under the Protocol.  Entitled in a country that is a member of both? -can file an application under both.  Entitled in India? - Protocol only, designating Protocol member countries. Cannot designate countries that are only Madrid Agreement members.

Procedure 1  Madrid Protocol application must be filed at the Trade Mark Office of the Country of Origin.  Based on a “home” registration or application in the Country of Origin.  Application sets out: Trade Mark. Goods and Services. Applicant. Applicant’s entitlement to file. Home application or registration. At least one designation.  In an official language of Madrid Protocol: English, French, Spanish.

Procedure 2  The Office of the Country of Origin certifies certain particulars of the application: -Do the Mark and Goods and Services correspond to the home application or registration? -The date and number of the home application or registration. -The date of filing of the International application. -If applicable, whether the Submission fee has been paid.  The Office then forwards application to WIPO in Geneva.

Procedure 3  WIPO checks the application for formal deficiencies, and the list of goods and services for clarity and classification.  WIPO has the final say on the form and classification of goods and services.  WIPO collects official fees.

Fees  Basic fee.  And: -Complementary fee for each designation. -Supplementary fee for each class over 3. OR -Individual fees.  Some countries require the Complementary fee.  Others set Individual fees; these cannot exceed their fees for a National or Regional application.

Procedure 4  When WIPO procedure is complete, WIPO; -Registers the mark in the International Register, -Publishes details in the International Gazette, -Issues Registration Certificate; and -Notifies Offices of designated Contracting Parties.

(151) (180) (171) 10 (732) JOHN LEWIS PLC 171 Victoria Street, LONDON, SW1E 5NN (GB) (812) GB (842) Public Limited Company United Kingdom (740) Linda J Harland C/o Reddie & Grose 16 Theobalds Road London WC1X 8PL (GB) (540) JONELLE (511) 24 Textiles and textile goods, not included in other classes; bed and table covers. Tissus et produits textiles, non compris dans d'autres classes; couvertures de lit et de table. (822) GB, , (832) AT, GR, IE, NO, PT

Procedure 5  Offices of Contracting Parties then have 12 or 18 months to raise any objections.  Each Office examines the application according to its normal procedures; - Trade Mark Office examination. - Publication. - Third Party Opposition period.  If no objections arise, some Offices of Contracting Parties tell WIPO, who tell the applicant.

Procedure 5  If objections arise, the Office of the Contracting Party sends a “Notification of Provisional Refusal” to WIPO, setting a response term.  WIPO notifies the applicant.  The applicant responds directly to the Office of the Contracting Party.  This usually (always?) requires a local Address for Service, and appointment of a local attorney.

Procedure 6 (and last)  If applicant overcomes objections and/or oppositions, then a Registration is granted in that country/region.  Scope of goods and services may be narrowed as a result of objections.  So the scope of the designation may be narrower than that of the International Registration. It cannot be broader.  Scope can differ in different countries.

Other Features 1  Adding Designations -After filing an International Application you can add new Designations at any time. - File through Office of Country of Origin or WIPO. - WIPO collects fees and notifies Office of Contracting Party. - Office has 12 or 18 months to raise objections. - Registration granted or refused.

Other Features 2  Dependency and Central Attack - For 5 years after International Application filing date, if the home application or registration is narrowed or limited in any way, then the International Registration is correspondingly narrowed or limited. - If basic application or registration is invalidated, then so is the International Registration. - Under the Madrid Arrangement, this is terminal. - Under the Madrid Protocol, conversion into national applications is possible.

Features 3  Centralised Procedures - Renewal fee payment. - Change of name recordal. - Assignment recordal. - Licence recordal.

Why use it?  Pro’s: - Simplicity - if no objections are raised. - requires good advice. - Single application. - Centralised register and renewals.  Con’s: - Complexity - if objections are raised. - Central attack. - Home country is outside International Registration - Dependence on home country practice.

Costs  Low, if no objections are raised, but not as low as applicants might wish.  Madrid Agreement Complementary fee is very low.  Madrid Protocol fees usually comparable to normal National or Regional fees.  Cost savings in local attorney fees if no objections are raised.

How Successful is the Madrid System? 1892Madrid Agreement 1880’sInvention of the motor car. 1890’sInvention of the radio. 1897Ahmedabad telephone service started. 1900’sInvention of the aeroplane. 1900’sFounding of Reddie & Grose. 1978Patent Cooperation Treaty 1996Madrid Protocol

How Successful is the Madrid System? Madrid Agreement 57 members* Madrid Protocol 74 members Patent Cooperation Treaty 138 members * Of which 7 are not also Madrid Protocol members

Is it a Good Thing?  An International Trade Mark Registration System sounds great.  But is it used less than one might expect?  Why don’t more countries join it?  Why does the PCT seem more successful?  Will the Madrid System become as ubiquitous as the PCT?

What do others think?  “Relax. The entire exercise might become a cakewalk with India deciding to become a signatory to the Madrid Protocol.” (Goliath: Business Knowledge on Demand)  “Although the Madrid Protocol is not the utopian solution, it definitely is the best system presently available…” (    ROMARIN and Madrid Express

Thank you Any Questions? Dr Simon Goodman, Reddie & Grose