When conducting business over international borders, one of the most important steps you can take is to protect your intellectual property. The Madrid Protocol covers more than 80 countries and was designed to help this process, but what is it and how can it support Australian exporters? The Madrid Protocol is a system designed to simplify the protection trade marks internationally. Providing the trade mark owner resides in a member country, they can protect their trade mark in several member countries at once by filing an application directly with their own national or regional trade mark office; in Australia, that office is IP Australia. Tom Rinder, a trade marks attorney at MacMillan Trademarks explains: "For an international business, the Protocol means that a single trade mark application can be undertaken to register a company brand-name or logo or slogan or other-throughout a large part of the world." Additionally, other Protocol countries can be added after international registration. Each member country still examines the application according to its own laws, and if the trade mark needs to be renewed or any changes recorded, this can also be done in a single request. Rinder notes: "The registration of a trade mark should be undertaken in every country where the business brand will be used, sold or licensed. Typically the Protocol works best where a number of countries are included in the application." There are several advantages of the Madrid system for trade mark owners:
- The ease of filing: Rather than filing applications in several countries, in different languages and paying several different fees, international registration can be achieved with one application, in language and with only one set of fees to pay.
- The ease of renewal: One payment, every ten years to the International Bureau of WIPO
- Ease of alteration: A change of name or address is easily recorded with all member states by means of one form.
- Quicker processing: The time period for overseas trade mark offices to issue a provisional refusal of the mark is limited to 12 or 18 months.
Administered by the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva, the Madrid system for the registration of marks was established in 1891 and operates via two treaties, the Madrid Agreement Concerning the International Registration of Marks (1891) and more recently, the Madrid Protocol, which came into force on April 1, 1996. The two treaties together provide an international system for the registration of trade marks, with the aim of making protection easier and simpler to achieve and manage. Both are open for membership to any state that is a party to the Paris Convention for the Protection of Industrial Property. In addition, the Madrid Protocol is open to an intergovernmental organisation such as the European Union, if the organisation satisfies certain criteria. Note, however, that Australia is a signatory only to the Protocol, meaning that an Australian business would typically only file an international trade mark under the Madrid Protocol, not the Madrid Agreement. The treaties are parallel and independent, but in 2008 new rules allowed that states previously bound by both the Agreement and the Protocol, will now only be bound by the provisions of the Protocol, the more recent and flexible of the two treaties. Also in 2008, the Madrid System became fully trilingual, meaning applications can be filed in English, French or Spanish. While also historically significant, the Madrid Protocol is more influential now than ever, with the number of member countries increasing. In 2008, WIPO received a record 42,075 applications for the international registration of trade marks, reporting a 5.3 percent growth rate.
Who uses the Madrid Protocol?
In 2008, WIPO reported that applicants from Germany topped the list of filers for the 16th consecutive year, followed by France, USA, and the European Community. WIPO director general Francis Gurry said: "Even in economically difficult times, businesses continue to recognise that a trade mark is a smart investment in a company’s reputation and long-term sustainability." Businesses looking to sell their products overseas are advised to protect their investment with international trade mark registration. It is a cost effective way to protect your name, brand, product, and reputation overseas, and hence, is a critical step for exporters. Registering trade marks provides the exclusive legal right to use, license or sell the goods and/or services for which it is registered. Protection of intellectual property and product or corporate branding are both vital when you’re launching a new product or into a new territory.
Things you should know
- You need to register your trade mark in Australia first before applying for international protection under the Protocol.
- Application does not guarantee registration in all countries-there could still be objections in other countries. "This places a premium on due diligence," explains Andrew Hudson, partner at law firm Hunt & Hunt. "For example, people might put a lot of money and time into a trade mark and they register it here, but then go to the US and find out they can’t register it there; someone else already has it. Or they find out that the relevant name has a different connotation, or an irrelevant or offensive one. You need to do your homework first."The Madrid Protocol makes it easier to conduct a search internationally as there is one governing body, WIPO, and one register. The general public can also access information online through the Madrid Express database and through the ROMARIN database, both via WIPO.
- It can be expensive to register through the Protocol, although it is cheaper than approaching every single jurisdiction individually. Make a cost analysis to find out whether it is worth the effort, or whether multiple applications are best.
- The Protocol does not provide a notification system of potential breaches. An exporter still needs to be able to monitor offending behaviours and then bring an action against infringement. Hudson explains: "This is a practical issue. You must continue to be alert to the fact if there is anybody else using your trade mark. If you’re working in a number of different countries you’d usually have an agent or a distributor appointed to represent your interests, and those people keep an eye out for possible infringements."
Outside the Madrid System
If a country is not a member of the Madrid Protocol, an application for trade mark registration needs to be made direct to that country. As Rinder advises: "For Australian businesses, some countries of note that are not included in the Protocol may be New Zealand and Canada." Matters for consideration for exporters include whether their proposed trade mark is available in that particular country, the cost and process for registration, the value of having the trade mark registered there, the level of IP protection and the ease of enforcement. If this assessment is satisfactory, then steps can be taken to initiate the registration process. Hudson advises that registration in your originating country is a prerequisite, and due diligence is a must. "Look at what the state and federal government can do to provide resources here and overseas on market issues. Make sure that whether you go to a trade mark attorney, patent attorney or an IP firm, they have good networks overseas. If you’re going to be exporting into one or more countries, these are areas where you really need to be dealing with organisations and people who have good contacts and good networks overseas."
Find out more
For more information on registering your trade mark, visit IP Australia’s website (www.ipaustralia.gov.au). For a full list of countries under the Madrid System, and for further details, see the World Intellectual Property Organisation website (www.wipo.int/madrid/en/).