International ‘Madrid’ Trademark Applications
Subject to having a basic ‘home’ application or registration (normally a UK or Community registration), it is possible to file a single application with a view to obtaining a single international ‘Madrid’ registration protecting your trade mark in those countries/territories of interest that have signed up to the Madrid Protocol. Madrid applications are generally not considered cost-effective unless at least three or four countries are designated.
Madrid applications have several advantages, including a single filing fee, a single blanket (10 yearly) renewal fee centralised administration for assignments, mergers and changes of name, (theoretically) quicker registration of trade marks in many countries, and a substantial reduction in the cost of registering and maintaining trade marks in a large number of countries, mainly by eliminating the need to appoint local attorneys (unless the application encounters an objection).
Furthermore, ‘subsequent designation’ i.e. ‘territorial extension’ is possible any time after registration, effective from the date on which it is recorded in the International Register.
That said, Madrid applications do have the significant disadvantage of the possibility of ‘central attack’, as will now be explained.
A Madrid registration is linked to the basic home registration for a period of 5 years. Any changes made to the home application or registration within that period will also apply to the international registration in all countries. If the home registration is lost within those 5 years, the international registration will no longer be effective.
A third party wishing to object to your mark(s) in each of the countries could therefore apply to oppose or invalidate your home application(s)/registration(s). This is called a central attack.
However, if a central attack is successful, it is possible (within a certain time limit) to convert the international registration to national applications and still maintain the filing (including priority) date of the original application.
If there are any objections, it is usually necessary to appoint a local attorney to try and resolve the objections directly with the local registry. This will add to the costs involved.
Contact us for more information on international trademark applications.