Saving costs on international trademark portfolios
Saving costs is of course of interest to any business. This is even more the case in the present economic climate where departments responsible for IP are also asked to cut costs without cutting corners. In that respect, international trademark registrations can be a viable solution: they are becoming more and more interesting as an increasing number of countries join the Madrid system (Mexico joins today, being the latest addition) and can be very cost efficient.
Already 89 contracting parties!
The World Intellectual Property Organisation (WIPO) continues to
work hard to persuade as many countries as possible to join the
Madrid system. New members in recent years are Oman in 2007, Ghana,
Madagascar and Serbia in 2008, Israel in 2010 and Curacao, St.
Maarten and the BES Islands (which became separate designated
countries as a result of the dissolution of the Netherlands
Antilles in 2010). 2012 was a bumper year for new accessions to the
Madrid system when the Philippines, Colombia and New Zealand all
joined the international registration system.
With the addition of Mexico today, the number of contracting parties to the International registration system has reached 89. Mexico, a G-20 member, is in fact an interesting addition because it has a growing economy, interesting for investors and can now be covered by an international trademark registration with all the benefits the system brings. As of 2004, Spanish is one of the languages that can be used to file for international registration. Mexico is the fourth Spanish speaking country to join. These developments are expected to encourage further growth of the system in Latin America.
An international registration is simple, efficient and cost
effective. There is only one application, covering as many
countries as required, in one language (instead of having to
translate the list of goods and services into different languages)
and attracting a single fee (instead of having to pay separate fees
in different currencies and with variable exchange rates to each
individual Office). It is also easy to apply for a territorial
extension of the international registration to cover more countries
if it is found at a later stage that protection in more countries
is desired. Furthermore any changes subsequent to registration,
(such as a change in the name or address of the proprietor, a total
or partial assignment of the registration to a new proprietor or a
limitation to the list of goods and services), can be recorded at
one time and with the payment of one fee. The international
registration is valid for ten years with only one expiry date and
renewal (either for all or only some of the designated countries as
required) can be achieved in one action with the payment of one
Another, not very well-known, advantage of filing for an international registration is that the Madrid System also contains provisions for claiming seniority where the designated region is the European Community. Such seniority can be claimed in respect of national or regional registrations, whereby the international registration replaces the national or regional registration but all rights acquired by virtue of the national or regional registration are maintained.
The Madrid System also recognises the "opting back" clause under the Community Trademark system, whereby if the European Union is designated as part of the International registration and if a trademark is invalid in one (or more) of the European Community countries, it can be converted (as a national designation) to those European Community countries where it would be regarded as valid, in which case it maintains the same date as the first filing. As part of an international registration, the cost of this conversion is noticeably less than under the Community Trademark system. Similarly, the Madrid System has it's own version of "opting back", the so-called "Transformation" clause.
A great way to cut costs
Summarising, the international registration system brings a number of efficiency and cost benefits for more and more countries, not only with regard to the filing and renewal fees, but also if we consider the cost benefits that will result from replacing existing national registrations with an international registration. It is thus a perfect way to cut costs in difficult times, whilst at the same time protecting a company's trademark portfolio!
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.