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Madrid Protocol
Where trade mark protection is required in multiple countries, it may be worthwhile checking if the countries of interest are party to the Madrid Protocol. For a list of the contracting parties, click here.
The Madrid Protocol is designed to enable trade mark owners to seek protection of their mark in multiple countries by filing a single application with the World Intellectual Property Organization (WIPO), offering the convenience of one filing, payment of fees in one currency (Swiss Franc), central processing of formalities by one office (WIPO), which will subsequently transmit the requests for protection to each of the countries designated. If there are no objections, the designated countries issue confirmation of protection of the mark and the trademark owner is notified by WIPO.
There are pros and cons to filing applications under the Protocol but generally, the costs of filing an International application under the Madrid Protocol designating 3 or more countries would likely be lower than the costs of filing independent applications in each of the 3 countries. However, there are pre-conditions to using the Madrid Protocol:
1. Entitlement to file under the Madrid Protocol
Only an Applicant with the requisite “Connecting Nexus” can file an International Application under the Madrid Protocol. This is defined in the Madrid Protocol as an entity that
- is a national of,
- is domiciled in, or
- has a real and effective industrial or commercial establishment
a Contracting Party of the Madrid Protocol.
A company incorporated in Singapore can file an International Application because Singapore is party to the Protocol. Malaysia has yet to join the Protocol but if a company incorporated in Malaysia has operations (“real and effective industrial or commercial establishment”) in Singapore, the Malaysian company can also use the Madrid Protocol.
2. Basic Application/Registration
An International Application is filed through the Trademarks Office of a member country (“Office of Origin”) with which the Applicant has Connecting Nexus so a Singapore company will typically file an International Application through the Intellectual Property Office of Singapore (IPOS). This must be preceded by trademark application(s) or registration(s) of the same mark in Singapore which will serve as the “Basic Application/Registration(s)” that supports the International Application. The International Application constitutes a request to extend the protection of the same trademark to the countries/regions that the Applicant selects (“designates”). The Applicant may decide to cover a different range of goods/services in the various designated countries/regions as long as they fall within the scope of the Basic Application/Registration(s).
IPOS charges a handling fee for serving as the Office of Origin and would check the International Application before transmitting the application to WIPO. The basic fees and designated fees are paid in Swiss Francs directly to WIPO. WIPO conducts formality checks and generally, in a matter of a few months, issues the International Registration and at the same time conveys the requests for protection to each of the countries/regions designated. Each country/region has a prescribed timeframe in which to examine the request for protection according to local legislation and issue refusal if necessary. WIPO would notify the trademark owner (known as “holder”). If the holder wishes to pursue the matter, advice of a local agent in the country/region concerned will have to be sought and arrangements made for response/appeal to be filed within the prescribed deadline. Where no response/appeal is filed in time, no protection will be accorded for that particular country/region, or if the refusal was partial, then protection will be accorded only to the part that was not affected by the refusal.
Therefore, having filed an International Application under the Madrid Protocol, or even having been issued an International Registration, does not mean that the mark is protected in each of the countries/regions designated. It is necessary to monitor the case in the next 12 to 18 months to see whether refusals are issued. Only where no refusal is issued, or where a refusal has been satisfactorily addressed within the prescribed deadline, will the respective country/region issue confirmation of protection, and only then should you regard the mark as protected in that country/region.
It is also possible to subsequently request for protection of a trade mark in more countries/regions, known as “Subsequent Designation”. This can be filed directly with WIPO and the fee payable is lower than the basic fee that was paid when the International Application was first filed. The rest of the procedure will be the same as if the countries/regions were designated initially. Protection of the mark in the additional countries/regions, if allowed, will date only from the date of subsequent designation, but will expire together with all the other countries/regions originally designated, subject of course to renewal.
In the first 5 years of an International Registration, it is “dependent” on the basic application/registration(s). This means that anything that affects the scope of the basic application/registration(s) will also affect the scope of protection in the designated countries/regions. In the case of an International Registration that was based on a Singapore application, if certain goods are deleted from the specification of the Singapore application, those goods shall also be removed from the coverage of the International Registration and in the coverage of each of the designated countries/regions. If the basic Singapore application is refused in total, the entire International Registration will become ineffective, leaving no protection of the mark in all the designated countries/regions. The holder can however file request for transformation of the protection to a national/regional application/registration in any of the designated countries/regions.
Only an entity that has “Connecting Nexus” to a Contracting Party of the Madrid Protocol can become the assignee or subsequent trademark holder of an International Registration.
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