The Madrid Protocol (MP) has allowed the owners of trademark registration to protect these in several countries by a simple application before their local or regional trademark office. Of course, the original application country and the ones designated thereof must be part of the MP.
The protocol has been in force since 1996, and ever increasing numbers of countries adhere to it (see below for a list of all the signatories).
In Latin America, only Antigua and Barbuda, Colombia, Cuba and Mexico have signed on to the agreement, and consequently only these countries can be designated for the protection extension that the MP allows. It is expected that other Latin American countries will become parties to the protocol over time.
However, the new application does not grant automatic registration of the mark. In fact, it works as a whole new application, which figuratively is filed by the World Intellectual Property Office (WIPO), before the local IP authorities, on the applicant's behalf.
As a consequence of this, the local trademark offices will examine the application with the same severity as they would a regular/local trademark application. In this examination, the office can either admit the application for registration or reject it, based on any relative or absolute ground, as foreseen in the local legislation.
Should the request for protection extension be rejected, a provisional refusal resolution will be issued, and notified to the WIPO, which in turn will notify the applicant. Here is where the applicant will have to contact a local trademark specialist in order to get an assessment and advice on how to overcome this provisional refusal. The reply to this resolution must be filed by an agent from the country where the application was rejected.
After this brief explanation, it is important to reflect on whether or not it is recommendable to require the Madrid Protocol protection extension directly. Although many applications are admitted by the local Trademark Offices, many are not, and this is because each one has individual criteria, and trademarks are often rejected based on a prior mark that would not have been considered as confusingly similar in another country.
Consequently, a prior analysis of these matters, before requiring the extension the applicant should spend some time and money analyzing whether it is possible to encounter some conflict, and consequently be better to get advice beforehand is recommendable. Before requiring the extension of an International Registration, it is suggested to contact a local trademark specialist, who can conduct a thorough and full availability search for the trademark that the applicant is interested in, and advice on the best way to proceed.
If a prior trademark comes up, the local specialist can provide ideas for obtaining the registration, by including other elements, or with different legal services, such as prior negotiations or legal actions.
Although these prior measures might be considered unnecessary, and perhaps even as an excessive expense, it is important to highlight that they may result in a smoother registration procedure, which overall may be cheaper than one were posterior assessments and appeals need be filed on an urgent basis.
Furthermore, by foreseeing conflict, and doing everything possible to avoid it, it may be possible to save months, or even years, in the registration procedure.
In short, despite the fact that requiring the territorial extension of an International Registration may sound like the easiest and cheapest way to obtain trademark protection (and sometimes is), it is highly recommendable to consult with local experts on the chances to reach registration, and on possible courses of action, in order to avoid posterior conflicts later in the process.
For another insight on the consequences of the implementation of the MP, please see Laura Moreno's piece on the matter posted previously in our blog: http://www.moellerip.com/madrid-protocol.
List of signatories up to Jan. 13, 2017:
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.