International applications rose by 6.4% in 2013 which suggests applicant are increasingly aware of the cost savings available by using this system. With more countries signing up to the Madrid Protocol - Colombia, Mexico, New Zealand, Philippines, Rwanda and Tunisia all joined in the last two years - there are now 91 contracting states covering most major markets. Canada, Malaysia, Indonesia and Thailand are expected to join in the near future. All brand owners should consider using the International Registration (IR) system, and this article outlines its advantages and disadvantages. We also provide a handy checklist to determine whether you should file international applications for global trade mark projects.
The most noticeable benefit is reduced cost, particularly when filing in a substantial number of countries. As the application is handled centrally by the International Bureau there is no need to instruct local agents in each jurisdiction at the outset and once registered, renewals are handled centrally, which means lower legal fees.
An allied benefit is that the system promotes simplicity, as using the IR system can reduce the possibility of errors or missed deadlines. All the national designations of an IR have identical details, at least up until examination, and you can add or remove countries from the registration at any point.
It is also simpler to handle assignments of IRs as this can be done through the central bureau, although we should note that there are restrictions on assignment of marks to owners in countries outside the Madrid Agreement and Protocol.
Finally, filing on a international basis can also mean that the application is processed more quickly by national Trade Mark Offices, as the system imposes strict time limits on the completion of examination of the mark.
The threat of central attack is the biggest drawback to using the IR system. If the base application or registration on which the IR is based is refused, withdrawn or cancelled during the first five years the IR also falls down. However, in practice the risk this poses is probably very low - the number of IRs that were withdrawn due to central attack runs at around 2%. Conducting detailed trade mark searches in the country of the base application and at least screening searches for other designations before filing a IR will reduce the risk of central attack and the subsequent cost of transforming the IR into national applications.
Also bear in mind that the cost and simplification advantages can be overridden if an IR has significant objections or oppositions raised at local office level. It is sensible to consider the mark and specification before deciding on the IR route. Ideally the mark should be distinctive, and the specification should be precisely defined and limited as far as sensible to the actual intended scope of use.
Finally, IRs are likely to be unsuitable for companies that have complex ownership or licensing arrangements for their marks as all the designations must have the same ownership details.
Overall, the benefits of the IR system in terms of cost and simplicity are significant. However, consider the checklist below before filing to ensure that you avoid the potential disadvantages for more complex applications.
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