Since its adoption in 1989, the Madrid Protocol has facilitated a simplified procedure for securing trademark protection. Businesses and individuals can submit a unified trademark application through their home country’s trademark office extending protection to other member countries under the protocol. This tool allows for significant time and cost savings compared to the alternative of filing individual trademark applications in each country, and last year a number of changes were made to the protocol.
Recent Changes
As of November 1st, 2023, the Madrid Protocol underwent notable amendments, primarily affecting the prosecution phase of trademark protection. These changes enhance the system’s efficiency and transparency.
Provisional Refusals and Clear Deadlines: In cases of provisional refusals, National Trademark Offices are now mandated to explicitly state the deadline for responding to the refusal, reviewing it, or filing an appeal. If the deadline is not stated, WIPO must reject the refusal, compelling the National Trademark Office to rectify the omission. This initiative aims to eliminate ambiguity and provide trademark owners with clear timelines to navigate the response process.
Refusals Based on Prior Rights: Refusals based on prior rights now require the National Trademark Office to disclose the name of the earlier rights holder and their representative, mirroring transparency requirements also extended to oppositions. These changes are designed to foster openness and clarity throughout the trademark registration process.
Limitation of Goods and Services: A noteworthy change pertains to filing limitations on the description of goods and/or services through WIPO. Local registries now have the authority to decide if such limitations apply to a specific country designation. This underscores the importance of understanding the nuances of each jurisdiction within the Madrid Protocol.
Upcoming Changes
Additional modifications are scheduled to be implemented starting November 2024. One significant update relates to country member designations made with a WIPO filing in respect to countries where a registration pre-existed. In these cases, both WIPO registrations and national registrations will be allowed to coexist, with the pre-existing national registration retaining priority. This is particularly relevant for older national registrations, which often boast broader descriptions of goods and services.
Impact on Trademark Owners
The changes promise clearer deadlines for responding to provisional refusals, ensuring a smoother and more transparent process. WIPO’s intervention to oversee these deadlines is a reassuring measure that guarantees trademark owners can address refusals with the precision and promptness they deserve.
