Legal Updates

Intellectual Property: International Trade Mark Applications under the Madrid Protocol - European Community acceded to the Madrid Protocol

The European Community ('EC') acceded to the Madrid Protocol ('Protocol') earlier this year providing a one-stop registration system for European Union (EU) member countries to the Protocol. The Protocol offers UK trade mark owners the possibility of having their trade mark protected in several countries by simply filing an International application directly with the UK Patents Office and designating the requisite countries in which registration is sought. The main benefits of a trade mark owner using the International system or Protocol is to obtain a bundle of national trade mark registrations from a single application. In addition, the initial central filing saves time and costs.

In order to use the Protocol system, the trade mark owner must:
 

• Be a national of one of the Protocol member countries; or
• Be domiciled in one of the Protocol member countries; or
• Have a real and effective business or commercial establishment in one of the Protocol member countries.

To use the Protocol, applicants must also have a national trade mark application or registration in one of the Protocol member countries such as the UK. This will be used as the basis of the International application. The International application will cover the same trade mark and goods and services but no wider than that for the national mark. If you wish to make an International application, then you could file your International trade mark application via us with the UK Patent Office.

Until recently, a trade mark owner had to designate individual EU countries of the Protocol to achieve trade mark registration in those countries. However, the EC has signed the Protocol which allows Community Trade Mark (CTM) holders to centrally register their CTM trade marks for the Protocol in the member countries. What this means in practice is that on making the Protocol application a trade mark owner will be able to tick the whole EU on as a single country instead of going through individual member states. A Protocol application may be filed and prosecuted in a single language, either English or French, and has a ten-year lifespan with a single renewal date. One central notification will record name or address changes and assignments, and more countries may be added after the initial filing date. The Protocol so requires that the trade mark remains exactly the same as in the original application.

This would assist trade mark owners in defining their trade mark strategies:

• Once the initial application is filed, the applications are then examined by the Trade Mark Offices of the countries designated and the publication, any oppositions and objections to the applications would still be processed by the national Trade Mark Offices. One point to note is that each Trade Mark Office would take different times to process objections and oppositions which might cause delays in obtaining trade mark registration in certain countries.

• In some cases, it would be beneficial for CTM owners to retain their CTM registration. One of the main reasons is that with the Madrid Protocol a trade mark owner has to use its registered trade mark within five years of achieving registration otherwise it is subject to cancellation. However, with a CTM registration, as long as the trade mark owner uses the mark in one EU country within ten years, the trade mark owner has protection throughout the EU. Therefore, a trade mark owner can retain the national registrations but still maintain the flexibility of the CTM system.

• The examination of an application made under the Protocol varies from country to country. For instance, there are divergences between CTM and US approach. The US system is different, for example:

1. For the CTM and indeed the UK system, class headings are allowed when making a trade mark application. However, the US authorities tend to examine trade mark applications very closely and apply relatively narrow class headings. Therefore, US trade mark owners, tend to lose out on broader international applicability and protection.
2. To take advantage of this broader protection afforded by the CTM system, US applicants may apply for CTM registrations in order to obtain EU coverage rather than using the Protocol.
3. Following registration of a trade mark, only minor changes are allowed under the Protocol such as change of names or addresses without having to make a new application. However, the modifications such as changes in colour or shape which might be accepted in the US would not be allowed under the Protocol or the CTM.

RT Coopers, can assist you in filing your International trade mark applications. If you require further information, please contact us.

Email: Dr Rosanna Cooper

© RT COOPERS, 2004. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.