Madrid Protocol: tips and tricks - what paralegals need to know

How to correct common errors, why are South American countries reluctant to join Madrid, and should you base an international registration on an EU trade mark? Expert speakers shared valuable insight with delegates at the first CITMA Paralegal Seminar, in October 2017.

Article by: Rachel Culverwell, Senior Trade Mark Administrator at Keltie 
Roy Scott, Senior Paralegal, Keltie, co-authored

Hosted by Keltie, the seminar was chaired by Roy Scott, with guest speakers: Sharon Fleet and Melanie Oliver (UKIPO), Jonathan Clegg (Cleveland Scott York) and Daniel Smart (Colman + Smart).

CITMA President Kate O'Rourke welcomed attendees before giving a brief overview of the latest paralegal developments, including the benefits of undertaking the CITMA Paralegal Course and the introduction of CPD from 2019.

Common errors

Sharon and Melanie, both Senior Trade Mark Examiners at the UKIPO, were then introduced as the first speakers and they talked about some of the most common errors and deficiencies that they find on new International trade mark applications.

One of the most frequent mistakes is a failure to recognise that the owner's name and address must be the same as the details of the UK mark on which the International application is based. Another issue is that the incorrect Entitlement to File is indicated when basing an application on a UK mark (an error which has now been eliminated by a tweaked version of the MM2 form now available through the UKIPO website).

They also highlighted issues relating to a failure to add a colour claim (or indeed limiting a claim by adding a colour that doesn’t feature in the UK application) and the Legal Entity section being left blank which poses a particular problem if designating the United States.

WIPO

Following a short coffee break, Jonathan Clegg commenced his talk entitled 'WIPO session'. However, before we could overwhelm him with too many questions, he made it clear that he doesn't have any direct influence in the way WIPO handles and processes matters. Interestingly though, he recommended a two day course run by WIPO that would be well worth attending.

Jonathan gave us an overview of the latest WIPO news, in particular noting that the Madrid Agreement has now almost become obsolete because all 100 members are party to the Madrid Protocol. In addition, Jonathan noted that Canada is also at an advanced stage in talks to become member of the Madrid Protocol – with one key stumbling block being that the Nice classification system for goods/services is only used by on a voluntary basis in Canada. It was also observed that South American countries are reluctant about joining the international trade mark system, as they are concerned on the impact on their national trade mark programmes.

In addressing the advantages of filing international trade marks, Jonathan referenced the possibility of avoiding the cost of employing foreign associates, reducing administration costs (e.g. a change of name can be actioned through the main international mark) and the fact that the time period for each designation to reach registration is capped, which is particularly helpful when designating countries that are notoriously slow at processing applications. He did mention some disadvantages however, namely that the administration can be complex due to the number of parties involved and that the International Registration is also dependent on fate of the base mark for a period of five years.

One further notable disadvantage cited was that WIPO is administrative not substantive in nature meaning, for instance, that they don't question the legitimacy of assignments.

International marks via the EUIPO

The final talk of the day was delivered by Daniel Smart and his session was dedicated to filing international marks via the EUIPO.

Dan went on to discuss the pros and cons of basing an international registration on an EU mark as opposed to a UK mark for companies with a real and effective business presence in the UK. In summary, his position was that basing an international registration on a UK trade mark is likely to be preferable, as a UK mark may be less likely to be challenged during the five year dependency period (n.b. central attack), the handling fee is cheaper and, of course, the elephant in the room - Brexit!

A short question and answer session followed, the speakers were thanked for their time and a lively drinks reception followed in Keltie’s bar area.

The CITMA Paralegal seminar was held on 27th October 2017 at Keltie’s London office.