Filing And Prosecution - Madrid System

Question 1

What is the Madrid System?

Answer 1

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

Question 2

Who may apply for a Madrid registration?

Answer 2

Need to meet TWO CRITERIA
1. Need to have entitlement
2. Need to have a base mark

Question 3

What are the entitlement requirements for a Madrid registration?

Answer 3

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

Question 4

Notable non-Madrid members

Answer 4

South Africa, Qatar, Taiwan, Argentina, Nigeria

Question 5

Notable Madrid members

Answer 5

UK, Japan, Spain

Question 6

What is a base mark?

Answer 6

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

Question 7

What is the country coverage of the Madrid system?

Answer 7

114 members covering 130 countries

NOT a unitary right - you pick and choose which countries

Cannot designate base mark

Question 8

What languages can a Madrid registration be filed in?

Answer 8

3 administrative languages - English, French, Spanish

(Possibility of new languages to be added)

Question 9

What types of marks are available for Madrid registrations?

Answer 9

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

Question 10

How does classification work for Madrid registrations?

Answer 10

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

Question 11

Can you claim priority on a Madrid registration?

Answer 11

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)

Question 12

What are the forms required for filing a Madrid application?

Answer 12

UKIPO has their own adaptation of the application form

MM2

Question 13

How do the application fees for a Madrid registration work?

Answer 13

1. basic fee - 653 Swiss francs
2. Individual fee(s) - vary per country
   Or
3. Complementary fee(s) - 100 CHF per country
   And
4. 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 )

Question 14

How does the initial procedure work for a Madrid application?

Answer 14

1. Madrid applications must be filed at Office of Origin (i.e UKIPO), same office as the base application
2. Office of Origin will check the Madrid Application matches the base application/registration
3. If everything is okay - the OOO certifies and forwards the application to WIPO

Question 15

How does examination work by WIPO?

Answer 15

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

Question 16

How is examination by designated countries carried out?

Answer 16

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

Question 17

Is it possible to divide an application?

Answer 17

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

Question 18

What is the form for division?

Answer 18

Form MM22 - filed with National Office of designated country, 177CHF to WIPO

Question 19

What happens if no objections raised/or objections have been overcome in 12 or 18 months from notification date?

Answer 19

Registration tacitly assumed

Statement of Grant issued from relevant countries confirming registration/protection - can check Madrid Monitor for status

Question 20

Which countries have second part individual fees?

Answer 20

Registration fees

Brazil, Japan, Cuba

Fees paid to WIPO after notification received (after registration)

Question 21

How long is an International Registration valid for?

What is the renewal period?

How does non-use work?

Answer 21

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

Question 22

Can you add more designated countries after mark has been registered?

Answer 22

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

Question 23

What are things to be aware of when including subsequent designations?

Answer 23

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

Question 24

What are the fees for adding subsequent designations?

Answer 24

Extension basic fee is 300CHF

(As well as individual / complementary / supplementary fees )

Question 25

Advantages of the Madrid system

Answer 25

1. Single application - single payment - protection in multiple countries
2. Filed at your own national office
3. Cost effective
4. Rejection in 1 country doesn’t affect the others
5. Easy to renew (and make recordals)
6. Can add extra countries easily
7. Set timescales (12 month or 18 month country)
8. Don’t have to deal with PoAs, notarisation, legalization
9. New countries joining all the time

Question 26

Disadvantages of the Madrid System

Answer 26

1. Not possible to assign a registration to a company based in a non-member country, assignee needs entitlement
2. Some countries have not passed local legislation recognizing IR’s so their enforceability is questionable
3. Less desirable if your trademark portfolio is managed regionally
4. If home mark is not of commercial interest then you have an unnecessary mark
5. If objections (provisional refusals) raised then cost savings quickly eroded
6. If your base application/registration has limited specification then this will be replicated
7. Maintenance of some designations quite complicated
8. Central attack

Question 27

Explanation of Central Attack and dependency

Answer 27

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)

Question 28

How can a base mark be lost?

Answer 28

1. Withdrawn
2. Lapsed (not renewed in time)
3. Renounced
4. Final decision of rejection, revocation, cancellation or invalidation

Question 29

What provision is in place if an IR is cancelled due to Central Attack?

Answer 29

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

Question 30

How does transformation work?

Answer 30

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

Question 31

How can we help deal with Provisional Refusals for clients from other countries?

Answer 31

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

Question 32

How can we deal with transformation for overseas clients?

Answer 32

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