The accession of the European Union to the Madrid Protocol is an important step towards integrating a global system of trademark protection. But, asks Edward Fennell, will it facilitate the registration and enforcement of intellectual property rights in the Protocol territories, or just add another hurdle of bureaucracy that needs to be overcome?

Global trademarks require global protection, and in an ideal world, there already would be a uniform worldwide system of registration in existence to protect them. Until then, however, trademark owners must continue to rely on applications for individual countries and groups of countries with all the resources and administration such a practice entails.

In many ways such an approach isn’t entirely nonsensical. After all, it is only the exceptional product that retains its value in all the world’s territories. While European trademark holders, for example, may be interested in the principle of worldwide registration, most are content just to register their marks within Europe and the US, or any other country that they find of interest in their work.

That said, the more the authorities can simplify and streamline the process of gaining trademark registration, the better it should be for business. Last year’s accession of the European Union (EU) to the Madrid Protocol represents, potentially therefore, an important stage in fast tracking registration from a continental to a global level. But whether it will do so in practice remains to be seen.

What is the Madrid Protocol?
Administered by the World Intellectual Property Organization (WIPO), the Madrid Protocol is a well-established registration system that enables trademark holders in Protocol member countries to gain protection for a mark beyond their home territory. The Protocol came into operation in 1989 with the UK, Germany, China and others joining in 1995, the US in 2003, and many other major economies following suit soon after.

The strength of the Protocol lies in its simplicity. It makes use of existing national registration systems – rather like a stepping-stone or a bridge – to provide umbrella access to international registration. Rather than processing individual applications for each of the Protocol members, a holder of a home trademark registration in a country which has ratified the Protocol (technically known as a ‘contracting party’) is able to apply for an international registration that will protect their trademark in the other countries which have also ratified.

The same applies for holders of a Community Trade Mark (CTM) registration. The CTM system provides single trademark registration across the whole of the EU. Holders of CTM registrations who are domiciled in a member state of the EU can now also use the Protocol to register their trademarks in the other Protocol member countries. But does this make life easier? Not necessarily so.

In practice, the accession of the EU to the Madrid Protocol has created not just another ‘stepping-stone’ between one system and another, but has also added a further level of complexity.

Too much choice?
In practice, the accession of the EU to the Madrid Protocol has created not just another ‘stepping-stone’ between one system and another, but has also added a further level of complexity. The more options there are, the greater the range of choice in scoping out your trademark strategy.

Not least the reason for this is that the national, CTM and Madrid Protocol systems operate on different fee structures, time scales and under different rules (including, for example, the number of languages required and the grounds for objections). These variations are so complicated, that there is no space here to start to list them all. In fact, as John Linneker of European attorney firm Taylor Wessing, puts it: ‘This becomes a nightmare to advise on because there are so many options available. Working out what is best will depend very much on your commercial requirements and priorities.’

To take a very simple example, although it is now possible to go from a CTM registration to registration in the US via the Madrid Protocol, it may not be worth doing so. As Richard Penfold of transatlantic law firm DLA Piper points out: ‘goods and services covered by registrations in the US are much more restrictive than in Europe, and a typical CTM would be unlikely to pass muster in the courts in America.’ Under the CTM system, there is no examination of whether the proprietor is using or is about to use the trademark on the goods and services claimed, and there is no
assessment of relative rights – it is up to third parties with an objection to register their opposition. In the US, however, the Patent and Trademark Office needs, in most cases, proof of use on the claimed goods and services and does not wait for interested parties to oppose registration. Instead, they fully investigate prior and pending registrations during the application process to ensure there is no conflict. Should it come to defending those unexamined Protocol rights in the US, there is a strong likelihood that you will have to defend an attack on the registration by working through the American advisers that were bypassed in the first place. Ultimately it may turn out that a national registration, based on the tight and narrow US system, is the best option if the US is a major priority.

A case-by-case strategy
But each case must be treated on its merits depending on the countries – and factors – which are of the most significance to your business. If you want to get a trademark registered in a hurry (say, in order to thwart active infringers), then the lengths of time at each stage of the process must be examined carefully.

For example, in Germany registration can happen within a few weeks – although opposition hearings are held subsequent to the registration. In the UK it is likely to take about nine months – but officials will have examined whether the same or a similar mark has been registered for the same or similar goods. The CTM system, meanwhile, frequently takes longer than one year to register a trademark – and longer still if there is opposition – but does not examine for conflicting marks. By contrast when a national registration is sought in Italy the process could easily take four or five years, again with no examination.

All of these must be put alongside registration using the Madrid Protocol. In its case, WIPO passes on the application to each of the national trademarks registries in the designated contracting parties. If these do not refuse it within a set period (at most 18 months), then the mark is considered registered. But that is not to say that the trademark registration is safe. A Madrid Protocol registration must be based on a home registration, and if the home registration is cancelled within the five years that are designated for its approval, then the international registration will also fall away.

The combination of the CTM and the Madrid Protocol systems may be an ideal solution in some circumstances, but it can also be somewhat flimsy. By bypassing the rigorous national examination – especially in a country such as the UK or the US – registrants may be setting themselves up for a fall at a later stage. The only answer is a carefully thought out marketing strategy – and a trademark registration process shaped in its image.

This article first appeared in IP Review, issue 10

For more articles by Edward Fennell please click here

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