The Madrid Protocol was introduced by the World Intellectual Property Organization (WIPO) as a modern solution for individuals who wish to register their trade mark in a matter which is far more cost-effective and convenient for all parties involved. This article will discuss and highlight both of the positives and negatives implications the Protocol presents.
Positives
- The central and most prominent advantage of the introduction of the Madrid Protocol is the convenience that it provides, namely to file just one application in an included state with just one set fee amount. This would then allow to apply for trade mark protection in all the included member states.
- In relation to the cost benefits of following the Protocol, the application can now be completed in just one of the official languages which WIPO allows. In contrast, previously, the brand owner would have to ensure the language of the application matched the language of the member country of where the protection was wanted. This change makes the application all round much quicker and also more cost efficient as there is no need to pay for representatives for every country or translations.
- Another great advantage from implementing the system is the broad range of protection it will provide to the brand owner. This is evident with the WIPO stating that the territories of the Madrid system add up to over 80% of world trade. As a brand owner this would create great peace of mind as most of the prominent trading countries have implemented the system. This ensures that any users of the system will be able to have protection of their mark across everywhere where it is most needed.
Negatives
On first reading, the Madrid Protocol would appear to be seen as a no brainier for a brand owner, however, this sadly is not the case and brand owners should be aware of some negatives before making crucial decisions.
- The first issue that can be presented is the logistical issues in relation to the application. As previously stated, once the application has been presented at member state level it can then be sent as an application to all others. However, the issue this arises is that the time frame from which each national state will take to process and present any objections to the mark could vary to a large amount which in result in the brand owner having uncertainty of their protection.
- Establishing on the previous point, the typical time frame of an application under the Madrid Protocol is around 12 to 18 months which is a much greater time frame then what is seen with the UK trade mark application process being typically around 3-4 months if there are no issues present. This much longer time frame could potentially discourage brand owners from using the system.
- Although once protection is granted by the Protocol, the brand owner is protected in every member state applied for, this doesn’t allow for immunity to any opposition. This would mean that third parties will still obtain the power to oppose a trade mark application even if the trade mark was accepted in the home state, meaning there is no degree of certainty.
By Rajveer Bhatti, an LLM Student at Solent University.
