The Madrid Protocol: Ten pitfalls to be aware of

5th Jul 2022

Essential but imperfect, we all know the Madrid System has its quirks - our ten key tips to navigating it will help you to keep your paralegal practice up to scratch.

WIPO building

Gail Nicol, a CITMA Paralegal with over twenty years’ experience and who is now training to become a Chartered Trade Mark Attorney, has selected ten insider points to help you out.

While the Madrid Protocol makes it far easier and more efficient when filing in multiple territories, it is crucial to remain aware of the aspects which could slow or halt your application.

An awareness of the potential sticking points is vital for you to excel as a paralegal.

1. Understand the four requirements that must be met when completing an international application form (MM2) – these are:

  •  providing details of the base application or registration
  •  ensuring the applicant has entitlement to file
  •  ensuring that the application is completed in one of the three working languages of the Madrid System (English, French or Spanish) and including the essential information on the form. The essential information is the applicant’s name and contact details (remember, since 1st February 2021, you must include an email address for the applicant and this cannot be the same as the representative’s email address), a representation of the mark, the designations in which protection is sought and the list of goods & services for which protection is sought.

​​2. Application forms must be typed (handwritten forms are not accepted) and cannot be filed directly with WIPO – they must be submitted to the Office of Origin, who will certify the details of the base mark before forwarding the application on to WIPO for further processing.

3. If the application is being filed in the names of multiple applicants, you should only indicate the name of the first applicant at item 2(a) of the MM2. All of the other applicants, together with their address and email details, should be listed on a separate continuation sheet.

4. Series marks are not allowed – if the base application or registration is a series mark, the applicant must choose which of the marks in the series they wish to claim protection for. If protection is desired for all marks in a series, then separate International applications must be filed for each one.

5. Be aware that certain countries – namely, Brazil, Cuba and Japan - have two parts to their fees and a second fee must be paid at a later date for registration.

Be sure to factor this in when providing cost estimates! The Madrid calculator (found here) is a great tool when working out the cost of official fees, whether for filing of new applications, renewal, subsequent designations or second part registration fees.

6. When designating the EU remember you must indicate a second working language (either English, French, German, Italian or Spanish).

7. When designating the USA you should also submit a completed form MM18.  If you do not send this form to the Office of Origin together with your completed MM2 then WIPO will raise an irregularity notice; the completed MM18 should then be sent directly to WIPO (do not send this to the Office of Origin).

8. If the Office of Origin identifies any deficiency with the application, they will raise this and provide you with an opportunity to correct the issue - be particularly observant of dates and deadlines! 
An International registration will be afforded the date on which the application is submitted to the Office of Origin, but only if the certified application is received by WIPO within two months from the date of receipt by the Office of Origin.

In instances where WIPO do not receive the certified application within this two month timeframe you will lose the filing date and instead the date of the International registration will become the date on which WIPO actually receive the application. 

This could have significant implications if you are claiming priority, as the revised date may then fall outside of the 6-month limit for the priority claim meaning that priority can no longer be claimed.  Similarly, if the Office of Origin were to certify the application and forward it on to WIPO who then discover that a piece of essential information is missing, they will raise an irregularity notice providing a term (typically two or three months) in which to rectify the issue. 

Provided that all of the missing information is provided within a period of 2 months from the date of receipt of the application by the office of origin, the international application will still retain that date. 

However, should any of the essential information not be received by WIPO until after expiry of the two-month period, the international registration will bear the date on which the final missing piece of information is received by WIPO.

It’s extremely important to make sure that all information is properly included at the very start of the process in order to avoid delays and potentially losing a priority claim.

9. Be sure that, if you are claiming a specific colour(s), you submit a representation of the mark in the colour(s) claimed. Also, if the mark contains any non-Latin characters or any numerals other than Arabic or Roman numerals, remember to provide a transliteration of the mark.

These are issues which may result in an irregularity notice being issued and so introduce an unnecessary delay into the processing of the application.

10. Should an irregularity notice be issued for any reason, such as an underpayment of official fees or issues with some of the terms of the specification, your response should be submitted via the Office of Origin.

Do not send this directly to WIPO as it will not be accepted by them and will only introduce further delay to the processing of the application.

This is intended for guidance only, please always conduct due diligence on any matters.

Author

  • Gail Nicol

    Part Qualified Trade Mark Attorney, Cameron Intellectual Property