Last year saw the Madrid International Trademark System reach 125 years in operation. Since its inception in 1891 the system has seen continued success and growth. Beginning with just nine founding members it now includes 100 member states in participation following the addition of Indonesia in October of this year. Following this, November 1st saw the introduction of changes to the Regulations under the Madrid Agreement and Protocol. These two parallel treaties make up the Madrid System which is administered by the World Intellectual Property Organisation (WIPO) and offers protection of a mark through one single application covering a range of countries. These new changes involving trade mark registration will directly benefit trade mark holders and include the following:
The Introduction of a Voluntary Description of a Mark –
While some countries require applicants to provide a description of their mark in their application, those who do not give one when required, may end up with a provisional refusal. To prevent this, applicants will now have an opportunity to include voluntary description of a mark in their application or subsequent designation.
Changes to Rules 3, 25 and 32 –
These rules cover the cancellation or appointment of a representative and when done so on applications after November 1st, WIPO will notify the IP Offices in the countries covered by your registration and publish such appointments or cancellations in the WIPO Gazette which is published weekly.
Changes to Subsequent Designation Regarding the United States –
Irregularities not amended within the three-month deadline concerning form MM18 (Declaration of Intention to use the mark in the United States) will mean that US designation will be abandoned but not your other target markets as was the case before.
The Madrid System can be a valuable tool for trade mark owners to apply for international registration of their mark. Statistics from 2016, show an estimated 52,550 international applications were filed under this system, which was the fastest growth since 2010. As mentioned earlier it requires one single application, but also one single set of to seek protection in up to 116 countries.
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