International ‘Madrid’ Trademark Applications
Subject to having a basic ‘home’ application or registration (normally a UK registration for UK individuals/companies), 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 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, cost-effective territorial extension is possible any time after registration, effective from the date on which an application to extend protection geographically is recorded in the International Register.
That said, Madrid applications do have the potential disadvantage 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.