E-briefing: Debunking the Myths of the Madrid Protocol Application

E-briefing: Debunking the Myths of the Madrid Protocol Application
26 Apr 2021

In conjunction with World IP Day (26 April), we would like to raise awareness concerning Trademark Protection vis-à-vis the Madrid Protocol (MP) and debunk certain myths or misconception that trademark owners may have towards this filing system.

Myth #1 – Does filing an MP Application means a worldwide trademark protection?

No. Trademark protection is territorial and not every country in the world is a signatory member to the MP. There are currently 124 countries that offers the choice of an MP application and many major market countries such US, UAE, China, Japan, EU, UK etc are signatories. Hence you may find it useful to cover trademark registration of such major markets in 1 single International Registration (IR) with the MP system.

Myth #2 – It is always cheaper to file an MP application than to file in the individual countries

Not necessarily as it depends on the number of countries you would like to designate. After countless cost comparisons, we find that if the number of countries designated are less than 7 to 10 countries, the cost is roughly the same or less depending on the designated countries of choice.

Myth #3 – I have received the Certificate of International Registration. Does that mean my mark is now registered and protected?

Certificate of International Registration is merely a provisional registration subject to further Substantive Examination by the designated countries Trade Marks Offices. Following this, the Trade Marks Office of each of the designated country shall process the International Application as a National application and it reserves the right to refuse grant of protection for this mark within the 18-month period from the date of notification. If no refusal is notified by the relevant Trade Marks Office of the designated country within the applicable time limit, the mark shall be deemed protected in that country and a Statement of Grant of Protection will be issued in due course. 

Myth #4 – When a ‘central attack’ happens, I lose my IR and trademark protection completely

For a period of 5 years from registration of IRs, they depend on basic ‘home’ applications. In Singapore’s context, this refers to applications filed with IPOS. For these 5 years, if ‘home’ applications are abandoned or cancelled, IRs are automatically cancelled – colloquially known as ‘central attack’. If this happens, you may pay a fee to convert the applications/registrations in the designated countries to national applications/registrations and not lose your trademark protection in those countries completely. 

Myth #5 – MP will always be the preferred filing option over individual country filings

There may be many reasons why in some scenarios, individual country filings may be a better filing strategy compared to the MP route due to the difference in local trademark laws and practices. This would depend on the type of mark you are intending to protect, whether or not you intend to file a series mark, the manner in which you will be using the mark filed etc. as there are limitations to an MP application for example, you can only choose 1 mark representation to be filed as series application will not accepted. It is best to seek the advice of your trademark agent as to which filing strategy is best for you.

The above are merely some of the myths and misconceptions that we often provide clarification for. If there are any other such myths or queries concerning the MP process and systems, please feel free to reach out to our team at ipprosg@harryelias.com and we would be happy to assist you in your query.

For further information, contact:

Esther Wee

Head of IP

Harry Elias Partnership LLP

estherwee@harryelias.com   

+65 6361 9350

Tan Weiyi

Partner

Harry Elias Partnership LLP

weiyitan@harryelias.com 

+65 6361 9376

Supporting Team Member

Daniel Yap

Trainee

Harry Elias Partnership LLP

danielyap@harryelias.com

For more information, please contact our Business Development Manager, Ricky Soetikno, at rickysoetikno@harryelias.com.

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