The Madrid Agreement ( WIPO) – probably the first thing that comes to your mind when considering filing for an international trademark. And it's true that the majority of people think they may obtain global trademark protection using this system. However, first of all, not all countries are members of the Madrid protocol. It does include major countries however there are at least 50 countries which did not join the Agreement, therefore, you still need to file the mark following the national procedure in the non-member countries to protect it. Secondly, there are requirements to use the Madrid protocol which should be met in order to start the registration process.
The WIPO or the World Intellectual Property Organization is an intergovernmental organization founded in 1967 and is one of the specialized agencies of the United Nations system. The organization helps innovators to protect their inventions, brands, designs and other types of Intellectual Property in foreign countries. The United Kingdom was one of the founders of the organization.
To answer the most popular questions regarding the registration process and help you determine the best way to protect your trademark it is crucial to underline the advantages and disadvantages of the Madrid process.
1. You file the marks in one international application, therefore you do not need local attorney and powers of attorney for the countries of your interest, which simplifies the process of filing;
2. Cost-effective prices when filing in more than 6-8 countries simultaneously. Also, it’s usually cheaper to maintain one WIPO trademark than 8 national trademarks;
3. You can handle all the process of registration in one of the official languages of the System( English, French, Spanish), thus there is no need to use the official language of the destination country.
4. If you mark receives a WIPO refusal in one country, you can decide if to respond to the received objection or to allow the mark be refused in this country. Other countries will not be affected.
When you see this list it might be enough for you to decide that Madrid protocol is a perfect option to protect your trademark in other countries, though you should not make facile decisions as it is an essential step in the global protection of your trademark and you need to know the weak points of the Madrid system as well to make a final choice.
In case your application has issues during the registration process in some of the countries you wish to cover, you will have to hire a local attorney to handle your case (might be quite expensive in some countries);
1. In order to file a mark using the Madrid Agreement, it is required to have a registered trademark in the country of your citizenship/incorporation(and this country must be a member of the Agreement) or at least filed mark as this trademark will be considered as a basic mark. Note that if your basic mark is not registered for any reason, all the marks filed via the Madrid Agreement will be canceled as well.
2. The mark filed in other countries will be identical to your basic mark, which means you are not allowed to broaden the list of goods to protect under your trademark or add more classes to the application( for example the USA, where the USPTO allows new classes to be added to the application for an additional fee in case the listed goods and/or services exceed the international class in which they were originally filed), and some of the goods might be not accepted by the trademark office of the respective country;
3. Registration process takes approximately 18 months. Using the national procedure will be always faster than using the Madrid Agreement;
4. There are countries that do not recognize WIPO certificates of registration and you will have to request a certificate at the National Trademark Office which requires paying an additional fee (for instance, China);
5. In case you decide to sell, for example, one of your trademarks filed through WIPO in some of the countries, you will have to convert it to a local mark first which is an expensive and complex procedure
In summary, despite the apparent simplicity of the process and attractive prices, try not to be blinded by the pros of Madrid protocol as registration through WIPO might cause issues in the future in view of the list of disadvantages that should not be underestimated.
Our company has extensive experience in trademark registration via both the national procedure and Madrid protocol and we will be happy to guide you through the whole process of registration regardless of the way you chose.
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