TRADE MARKS Introduction; Use; Registration; Product Marking; Foreign Applications; Community Trade Mark (CTM) Registration; International Trade Mark Registration (Madrid Protocol); Novelty/Timing; Searches.
	International Trade Mark Registration (Madrid Protocol) A treaty exists between many countries whereby a person may obtain trade mark registration in as many countries party to the arrangement as is desired by means of a single application made at WIPO in Geneva. (see Patents). It is based on an earlier national application or registration. What results is a bundle of national registrations rather than a truly “International” registration obtained via a simplified and cheaper application procedure. Unlike a CTM application, if an International registration is challenged successfully on the basis of an earlier national right, the registration fails only in that one country. The exception to this is where the national application or registration on which the International registration is based is challenged successfully within its first 5 years, in which case the entire International registration can be lost. This can be avoided where the national application or registration was made in the UK; in that case the applicant for registration may continue with applications in countries unaffected by the challenge. About 80 countries and jurisdictions are Members of the International registration system. The EU may be nominated as a single jurisdiction. Notable territories which remain outside the system are India, Canada, New Zealand, South Africa, Israel, Brazil and Indonesia. Obtaining registration via the International system is particularly cost effective in countries which are otherwise notoriously expensive or slow, such as China, Japan and some East European countries. The saving is made because all correspondence is made direct with WIPO in English rather than via local trade mark attorneys, though if an objection arises in a given country we are required to appoint a local attorney to respond to the local Trade Marks Office. The cost of obtaining an International registration is dependent on the countries selected and the number of classes of goods and services. For trade marks, passing off and licensing, contact either Ian Smith or Peter Cornford at our Bristol office.