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The Madrid Protocol - international trade mark applications

Written by Samuel O'Toole on 14 November 2018

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The Madrid Protocol (Protocol) aims to simplify filing international trade marks, and quite simply it does a good job.

The World Intellectual Property Organisation (WIPO) operates the Protocol but national offices (such as the UK Intellectual Property Office (UKIPO)) play a key part in its functioning. The UK entered into the Protocol in 1995.

The UKIPO will receive applications, via a Form MM2, from an applicant that wishes to make use of the Protocol. It is a requirement of the Protocol that a base trade mark application/ registration is used to ‘springboard’ onto the international register. There are also strict requirements about who can make use of the Protocol, the applicant must either be a national or domiciled in one of the Protocol member countries, if this is not possible it will be sufficient if the applicant has a real and effective business or commercial establishment in one of the Protocol member countries.

Once the applicant has made its application, via the base application/ registration’s office of origin, the office of origin will then forward the application to WIPO. WIPO will then proceed to conduct a formalities check and will then proceed to translate the application into English, Spanish and French. Occasionally, WIPO will issue an irregularity notice, a common reason for this is because the application’s class specification needs to be amended to be Protocol compliant. It should be noted that there are strict time limits for responding to such notices.

Once the application has been translated, the application will then be registered with WIPO and published in the International Gazette. But things are not over quite yet! The extract from the International Gazette will then be forwarded to the international applicants chosen designation(s).

Once the application is received by the Intellectual Property Office of the chosen designation, the international application will then be examined by the local office for national formalities. All being well the application will then generally be published for opposition purposes and providing no third parties object the international application will become a registered trade mark in the chosen designation.

There are a number of advantages to using the Protocol, not least the fact that one application may designate over 100 national offices. Therefore the costs savings can be very high as opposed to filing direct in each jurisdiction.

Please do not hesitate to contact with Lawdit should you need assistance with the filing of an international application.

If you'd like to know more about this article please send an email to Michael Coyle quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

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