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International Trade Mark Applications – Madrid Protocol

It now possible to file a special international type trade mark application called a Madrid Protocol Application. These applications allow the trade mark owner to file simultaneously in multiple countries around the world rather than filing individual applications in each country around the world.

One of the key benefits to the system is a large reduction in overall costs. The application can be centrally managed for Australian clients in Australia generally without the need to engage overseas attorneys and lawyers. This leads to direct reductions in relation to fees charged and streamlines the process.

Further these applications include only one payment which is an upfront payment that generally includes the respective country’s government filing fee and the government registration fee.

Another benefit is that overseas trade mark office must talk to the trade mark owner in English. This essentially means that future correspondence received after filing is in English which alleviates the need for expensive translations. Additionally, most examination responses can be managed from Australia.

Also, renewals are streamlined so that renewals can be made directly through the World Intellectual Property Organisation (WIPO) every ten years. This makes monitoring renewal deadlines much easier for applicants.

Madrid Protocol Applications need to be based on an Australian Trade Mark Application. If you file the Madrid Protocol Application within 6 months of the filing date of the Australian Basic Application then you will be able to backdate the international application to the earlier filing date. This gives Applicants the advantage preventing third parties seeing your Australian application and filing their own applications overseas.

A disadvantage with the Madrid Protocol system is that the fees are generally charged all upfront and if your trade mark application is rejected there is no way to recoup the registration fees which are hypothetically included within the Madrid Protocol application fees.

A further disadvantage is the Madrid Protocol Application ceases, if the Australian Trade Mark Application is rejected or lapses.  Also, some countries are yet to accede to the system and you won’t be able to file for rights in countries who haven’t agreed to the Madrid Protocol system, the most notable current exception is Canada.

If you are considering protecting a trade mark overseas and worldwide, a Madrid Protocol Application is well worth considering as it can save applicants a lot of time and money. The benefits become very apparent wherein you file in more than 2 overseas jurisdictions at once. Please ask us for a quote.

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