Today’s business owners have the opportunity to expand like never before. The rise of technological development can provide for a seamless expansion experience. Most business owners follow the safest and most of the time, the wiser route first, that is the national registration route. The reason for this characterization is that attempting to register too much and too early may end up being a nightmare due to the increased risk of being either rejected or opposed. Thus, when one has finally got to the end of a national trademark application and achieved the desired outcome that of registration, the question of expanding onto the international markets becomes evident and certain, provided of course that the business requires such a development.
The international system is based on the multilateral Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the Madrid Agreement (1989). It is often referred to as the ‘Madrid system’ and is administered by the International Bureau of the World Intellectual Property Organization (WIPO). Unlike its European counterpart which allows for a single registration throughout the European Union, the Madrid system only provides for a centrally-administered system of obtaining a bundle of national trademark registrations in separate jurisdictions. Nevertheless, when compared with the fees imposed by local agents on a pursuit for individual trademark registrations for each jurisdiction, this mechanism can truly be cost effective as well as time saving. However, the cost effectiveness usually resulting from using the Madrid system may be negated by the requirement to use local agents in the applicable jurisdiction in the event issues as to registration might arise.
In general, the primary advantage of the Madrid system is that it allows a trademark owner to obtain trademark protection in any or all parties signatory to the treaty, by filing one application in one jurisdiction with one set of fees in one language, and to make any changes (e.g., changes of name or address) and renew registration across all applicable jurisdictions, or even to only a number of them, through a single, straightforward, centralized and efficient process.
For some, the greatest drawback of the system is its dependence on the basic application. This dependence can, in essence, bring down the whole international registration no matter the plethora of national rights already granted. Fortunately, this can only be done within the first five years of the registration date of the international registration. When the basic application is confronted with a cancellation application, generally known as a ‘central attack’, which is successful, the basic application will be rejected in part or as a whole accordingly. If, and to the extent that, the basic registration ceases to have effect, whether through cancellation following a decision of the Office of origin or a court, through voluntary cancellation or through non-renewal, within this five-year period, the international registration will no longer be protected. After the expiry of this period of five years, the international registration becomes independent of the basic application. Another disadvantage is the requirement of local presence in the event of an opposition or renewal. Nevertheless, this is not the general rule, as it will only be needed on such an occasion.
This application cannot proceed without the necessary basis, that is an existing trademark application or registration, often called a ‘basic application’ or ‘basic registration’. Using this basic application, the trademark owner can then extend its protection to multiple jurisdictions, a process known as ‘designation’. The registration can even be extended to further jurisdictions at any time.
As regards the application itself, it is to be noted that the application must be submitted by the same owner that submitted the basic application, and the goods and services provided with the basic application must also match the international application or be limited down to just some of the goods and services of the basic application.
One must always have in mind the most important question, which is the ‘where to register the trademarks?’. To that, one must consider the following:
In summary, business owners are able to take advantage of the simplicity of the international registration system and the financial savings made when obtaining and maintaining the protection of their trademarks by always being diligent and by having the end goal in mind.
The content of this article is valid as at the date of its first publication. It is intended to provide a general guide to the subject matter and does not constitute legal advice. We recommend that you seek professional advice on your specific matter before acting on any information provided. For further information or advice, please contact Agis Charalambous, Head of IP at Telephone: +357 22 447777 or via email at: email@example.com