Filing And Prosecution - Madrid System Flashcards
What is the Madrid System?
Multi National system based on an international treaty
Administered and managed by WIPO (Geneva, Switzerland)
Allows a TM owner to protect their mark in numerous countries by simply filing one application directly with their own trademark office
Member state = contracting party
Who may apply for a Madrid registration?
Need to meet TWO CRITERIA
1. Need to have entitlement
2. Need to have a base mark
What are the entitlement requirements for a Madrid registration?
To meet entitlement criteria you must
1. Be a National of a contracting party
2. Be domiciled in a contracting party
3. Have a business in a contracting party
Notable non-Madrid members
South Africa, Qatar, Taiwan, Argentina, Nigeria
Notable Madrid members
UK, Japan, Spain
What is a base mark?
To apply for TM under Madrid Protocol you have to have an application or registration in your home or base country, I.e UK
The base country will be the jurisdiction you are claiming entitlement from
Office of origin - where your base mark was filed
What is the country coverage of the Madrid system?
114 members covering 130 countries
NOT a unitary right - you pick and choose which countries
Cannot designate base mark
What languages can a Madrid registration be filed in?
3 administrative languages - English, French, Spanish
(Possibility of new languages to be added)
What types of marks are available for Madrid registrations?
Ordinary marks
Collective marks
Certification marks
Guarantee marks (not in UK)
Series marks NOT AVAILABLE (can be used as a base mark but only one mark in the series will be allowed to be applied for)
Tick boxes available for 3D and sound marks
Mark you are applying for MUST MATCH the base mark
Collective/certification marks - only if local laws/legislation in designated counties allow for these
Have to be graphically represented
How does classification work for Madrid registrations?
Uses the International Nice classification
Specification must match the base mark (or can be narrower)
Can narrow a specification for certain countries and not for others (so long as it is contained within the specification from the base mark)
Have to be careful with China (as it has sub-classification)
Multi-class applications allowed
Can you claim priority on a Madrid registration?
YES - must be claimed within the six month window of first filing
Usually the priority application will be the base application
Don’t need to support priority (certified copy not necessary)
What are the forms required for filing a Madrid application?
UKIPO has their own adaptation of the application form
MM2
How do the application fees for a Madrid registration work?
- basic fee - 653 Swiss francs
- Individual fee(s) - vary per country
Or - Complementary fee(s) - 100 CHF per country
And - Supplementary fee(s)
Individual fee is payable if designated country has chosen to receive one, otherwise it will be a complementary fee
If you pick any complementary fee countries then there is also a supplementary fee due for each additional class of goods/services over 3 - 100CHF for each extra class
Payment of these fees direct to WIPO
ADDITIONALLY for UK ( handling fee of £40.00 charged by UKIPO - office of origin )
How does the initial procedure work for a Madrid application?
- Madrid applications must be filed at Office of Origin (i.e UKIPO), same office as the base application
- Office of Origin will check the Madrid Application matches the base application/registration
- If everything is okay - the OOO certifies and forwards the application to WIPO
How does examination work by WIPO?
Once application is received, WIPO examine for formalities, I.e check that correct fees have been paid, check the classification
WIPO will send an Irregularity Notice to the Office of Origin if there are any issues, OOO will then require a response e.g agreement to amendment of specification, if fees need to be paid these will be paid direct to WIPO - but all correspondence through OOO
Once all is fine, WIPO issues Certificate of Registration
Around this time, WIPO forwards details of the mark to the TMO’s of each designated country - this is known as the Notification Date
Notification date begins time period in which designated countries must examine the registration locally according to National laws
How is examination by designated countries carried out?
Objections must be issued within 12 or 18 months of notification date
If no objections raised in this time period then there is tacit acceptance
Objections (also called Provisional Refusals) will be raised in English, French or Spanish and communicated to WIPO who will pass this on to applicant/representative
- different deadlines for response
Objections (provisional refusals) can be partial or whole
If you need to limit a specification to satisfy the concerns of an Examiner this can be done by filing Form MM6
Responses to objections made to the relevant TMO (usually through a local agent), not WIPO
Is it possible to divide an application?
Possible where there are objections to some of the classes
In a multi-class application, the classes with objections can be transferred to a divisional application and dealt with later - allows acceptable classes to move forward without delay
Division possible for individual countries designated in an international registration provided division exists within national law
What is the form for division?
Form MM22 - filed with National Office of designated country, 177CHF to WIPO
What happens if no objections raised/or objections have been overcome in 12 or 18 months from notification date?
Registration tacitly assumed
Statement of Grant issued from relevant countries confirming registration/protection - can check Madrid Monitor for status
Which countries have second part individual fees?
Registration fees
Brazil, Japan, Cuba
Fees paid to WIPO after notification received (after registration)
How long is an International Registration valid for?
What is the renewal period?
How does non-use work?
10 years, can be renewed indefinitely every 10 years
Renew through WIPO centrally
However - certain countries have additional maintenance e.g. USA/Cambodia/Mexico - e.g Declaration of Use - have to be filed/handled through local IP offices
Non use periods governed by national/regional law in territories designated
Can you add more designated countries after mark has been registered?
Yes- known as subsequent designations, can add additional countries to the Madrid mark at a later date
Can be made through Office of Origin - but usually filed directly with WIPO
WIPO online - Form MM4
What are things to be aware of when including subsequent designations?
You cannot include certain countries if your IR date precedes that country joining the Madrid system
Be careful if adding close to renewal date, might be necessary to pay renewal fees for added country immediately
For Countries with additional maintenance requirements - renewal dates can be quite complicated if it is a subsequent designation
What are the fees for adding subsequent designations?
Extension basic fee is 300CHF
(As well as individual / complementary / supplementary fees )
Advantages of the Madrid system
- Single application - single payment - protection in multiple countries
- Filed at your own national office
- Cost effective
- Rejection in 1 country doesn’t affect the others
- Easy to renew (and make recordals)
- Can add extra countries easily
- Set timescales (12 month or 18 month country)
- Don’t have to deal with PoAs, notarisation, legalization
- New countries joining all the time
Disadvantages of the Madrid System
- Not possible to assign a registration to a company based in a non-member country, assignee needs entitlement
- Some countries have not passed local legislation recognizing IR’s so their enforceability is questionable
- Less desirable if your trademark portfolio is managed regionally
- If home mark is not of commercial interest then you have an unnecessary mark
- If objections (provisional refusals) raised then cost savings quickly eroded
- If your base application/registration has limited specification then this will be replicated
- Maintenance of some designations quite complicated
- Central attack
Explanation of Central Attack and dependency
For 5 years from date of registration, the IR depends on the base mark
If base mark is lost in this time then the IR will be cancelled
OOO will tell WIPO and they will cancel the IR
(Basing an IR on an application is therefore riskier than basing it on a registration)
How can a base mark be lost?
- Withdrawn
- Lapsed (not renewed in time)
- Renounced
- Final decision of rejection, revocation, cancellation or invalidation
What provision is in place if an IR is cancelled due to Central Attack?
If the IR is lost in first 5 years, you can turn the designations into national/regional applications in the relevant countries - this is called transformation
How does transformation work?
Transformation applications are just like overseas national/regional applications
Must be filed within 3 months of cancellation of the IR
Transformation applications backdate to the date of the IR (including any applicable priority date)
Not always official fees, but best to seek advice of local agent
How can we help deal with Provisional Refusals for clients from other countries?
Clients from other countries may come to us (as local counsel) in responding to Provisional Refusals issued by the UK IPO
We would file a TM33 and include arguments/agreements to Examiners amendments
How can we deal with transformation for overseas clients?
If an overseas client loses their IR through central attack we could be asked to transform this to a national UK filing
Applications must be made within 3 months of the cancellation of IR
Transformation applications backdate to IR including any priority date
Form TM4 - no fee
