Madrid Protocol: Trademarks Go International

Trademark registration is about to take a dramatic turn in Singapore when we accede to the Madrid Protocol in May this year. M Ravindran explains how this convention will enable international trademark rights to be obtained with a single application in Singapore.

Over the years, many lawyers and lay clients have asked me whether it would be possible to register a trademark around the world with one application. I have had to inform them that that was not possible and that trademark rights were territorial and a separate application was needed for each jurisdiction. Such a system added to the cost, time and effort needed to register worldwide rights and often local trademark holders would turn away disappointed and seek registration only in Singapore.

The Coming of the Protocol

Things change. In May this year, Singapore will accede to an international trademark convention known as the Madrid Protocol; it is expected that the convention will be operational in August. Despite its name, the Protocol (as it is commonly known by trademark practitioners) will be administered out of Geneva by the World Intellectual Property Organisation (WIPO).

Under the Protocol, it will be possible to obtain trademark rights in all countries which are members of the Protocol with only one application. As Mr Alan Drewsen, Executive Director of the International Trademark Association said in a recent conference in Singapore, the benefit of the Protocol is that you have ‘one application in one place with one set of documents in one language with one fee in one currency resulting in one registration with one number and one renewal date covering more than one country’.

Is this the trademark owner’s nirvana then? Not quite. At this point in time, only 44 countries have acceded to the Protocol. The notable omissions, at least as far as the Singaporean trademark owners are concerned, are the United States of America, the Asean countries, Australia and New Zealand. This means that we have to file separate national applications in these countries. However, this state of affairs is not expected to last for long as it is believed that the United States will join the Protocol by the end of next year, which would in effect, make it more attractive for the rest of the ‘non-protocoled’ world to join. Just to complete the picture, at the moment, the important trading partners of Singapore that are part of the Protocol are most of Europe, including the UK, China and Japan.

Filing Procedure

Under the Protocol, an international application may only be filed by a person who has a real and effective industrial or commercial establishment in, is domiciled in, or is a national of one of the countries which is a party to the Protocol. Therefore, once Singapore joins, Singaporean nationals or corporations can file under the Protocol.

In order to make an international application, one would have to file or already have a basic application at the Intellectual Property Office of Singapore (IPOS). This basic application should correspond with the international application in respect of the name of the proprietor, the specification of goods or services and the mark itself. The international application is then filed at IPOS. The question of the fees payable as well as the procedure of payment has yet to be worked out but one possibility being bandied about is that there will be a fee which is in Swiss francs payable to the International Bureau together with an administrative charge in Singapore dollars payable to IPOS. The fee would depend on the number of countries designated in the international application. IPOS then relays the international application to the International Bureau in Geneva.

The International Bureau has a very limited role. It merely checks whether all the formalities are in order and then transmits the application to the registries of the countries which have been designated in the application. The Bureau does not decide whether a mark qualifies for registration. This role is performed by the registries of the various designated countries. Therefore, depending on the laws of the various countries and the prior rights existing there, the different countries designated may come to different conclusions as to whether or not to accord registration rights to a particular mark.

Advantages of the Protocol

There are three main advantages of an international application through the Protocol. The first advantage is the elimination of the costs involved and formalities needed when filing through foreign associates. In fact, one may not need a foreign associate at all if the registries of the designated countries do not raise any objections to the registration of the mark. If an objection is raised, the applicant or his agent in the home country will be informed and only if one wishes to contest the objection would a trademark practitioner in the country concerned have to be instructed.

The second advantage is that under the terms of the Protocol, registries of the designated countries in an international application have, generally, 12 months to respond on whether they intend to object to an application. If no objection is issued, the mark is deemed registered. This is a great step forward as in certain countries, it may take several years before a response to an application is received, which causes a great deal of frustration and dissatisfaction. In some cases, the time for filing a renewal had come and gone and the mark had yet to be registered. The 12-month period mentioned above may be extended to 18 months by the individual registries, and for oppositions, that period may be further extended. Nonetheless, the time limits imposed under the Protocol afford some degree of certainty over the rights to be granted.

The third advantage is that post-registration procedures are considerably simplified. In this day and age of mergers and acquisitions, assignments and changes of names are common. Currently, one would have to find out the formalities needed and information required as well as instruct a local agent to file the application to assign or change a name in the individual countries. The costs involved and the effort required can be considerable given that the task is essentially a simple one. Further, renewal of trademarks under the Protocol will be a one-act procedure rather than the multi-jurisdictional nightmare that it is now. Registrations are valid for ten years, after which renewals have to be filed.

Significance of the Basic Application under the Protocol

The main point of concern in using the Protocol as a strategy for international filing would be the enhanced significance of the basic application or registration in the home country. For a period of five years, the international application is dependent on the basic application or registration. If, for example, the basic application or registration is refused or revoked during this period for any reason, this would extinguish the rights granted in the other designated countries. It is for this reason that the basic application has to be treated carefully to ensure that it will obtain registration with the least amount of difficulty. However, in the worst case scenario, it would still be possible to convert the international application to individual country applications whilst preserving the original filing date.

Conclusion

The law eventually catches up with reality. On the back of goods and services, trademarks have become instantly recognisable all over the world; this has been true for many years already. The Madrid Protocol simply acknowledges this fact and provides a simplified procedure for legitimate interests to be registered and subsequently protected.


M Ravindran
Ravindran Associates