09 May 2005
Key Points:
The International Registration system for trade marks known as the Madrid Agreement and Madrid Protocol is continuing to expand with more countries becoming parties to the Madrid Protocol.
The accession of the European Union to the Madrid Protocol is an important milestone for the Madrid Protocol. The accession of the EC will allow for a link between the Madrid Protocol system and the European Community Trade Mark system which is administered by the International Office of Harmonisation in the Internal Market ("OHIM").
Under the European Community Trade Mark system, by making one application to OHIM for a Community Trade Mark ("CTM") it is possible to obtain registration of a trade mark which will give equal rights in all the countries of the European Union, including those which joined the European Union in May 2004.
With effect from 1October 2004, it is now possible to designate the European Union under the provisions of the Madrid Protocol when making an International Application. From that date, OHIM will be able to accept an International Application designating the European Union as an application for a Community Trade Mark, and as a consequence Australian trade mark owners will be able to obtain a CTM registration by means of a single application under the Madrid Protocol.
In addition, the United States is a member of the Madrid Protocol, and from November 2003 an application for a United States trade mark may be made under the Madrid Protocol.
The ability to use the Madrid Protocol to obtain a CTM and a United States trade mark is an important turning point in the expansion of the Madrid Protocol. In particular for Australian trade mark owners, it opens up another avenue for obtaining protection for their brands and trade marks overseas, and makes more economically viable the use of the Madrid Protocol system.
Australian trade mark owners can protect their marks and brands in overseas jurisdictions either by filing applications separately in each jurisdiction or by using the Madrid Protocol. Obtaining an international registration using the Madrid Protocol can be a more straightforward and less expensive option, but there can be disadvantages and it may not be the best approach in all cases. For example, for trade mark owners with a regional focus, there are still a significant number of countries in the Asian/Pacific Region and in Africa which are not members.
The use of the Madrid Protocol will be an increasingly important tool for Australian businesses who want to protect their brands and trade mark overseas and should be a factor in strategic planning for entry into overseas markets.
