New members: Thailand and Cambodia
To come: Indonesia
The “international” trademark system (otherwise called “agreement and protocol system of Madrid”) shall cover in the near future 116 countries, ensuring more than 80% of the global trade.
Regularly, new members join this system due to its very attractive nature. Thus, this month, Thailand and Cambodia adhered to the Madrid Union and Indonesia shall become, next January, the 100th member.
From then on, it is possible to designate these territories within an ”international” trademark, thanks to a registration or a prior designation at the World Intellectual Property Organization (WIOP).
The entry of these territories into the Madrid protocol is favorably welcomed by trademark holders who might, from now on, obtain local protection in exchange of lower costs compared with national trademark registration at competent national offices.
It must be reminded that the Madrid System allows the trademark holder to extend his/her protection in one or several member countries, under particularly interesting pricing conditions and in accordance with a unique registration procedure characterized by:
. one registration of the trademark designating one or several member countries,
. a sole interlocutor,
. a sole procedure language (choice of French, for example),
. a sole request for designating several classes (multi-class registration),
. a sole registration certificate,
. a sole renewal request,
. a sole registration request in case of change of name, address or holder.
With the implementation of such a system, a trademark holder who would like to extend his/her rights, for example, in Germany, in China, in Australia and in the United States of America, should have registered his/her trademark in each of these countries. The Madrid System helps avoiding such an inconvenience, by lessening the often complex related processes and allowing for a legal protection identical to a national trademark registration.
The registration of an international trademark is however conditioned by the prior existence of a basic trademark (submitted or registered) in a state or a member organization of the Madrid System.
It is thus worth considering the use of the Madrid System after having submitted for registration or obtained the registration of a French trademark or an identical mark of the European Union.
Each designated territory has at its disposal a maximum deadline ranging from twelve to eighteen months, starting with the international registration notification date, for examining the trademark according to its own legislation. In a majority of countries, only the local council is authorized to intervene at its competent Office for answering to an objection. In this respect, the IPSIDE Cabinet shall refer to its privileged fellows network for helping you in these processes.
In case of exploitation of the trademark on the European market, it could be strategically suitable to head directly towards the registration of a trade mark of the European Union, designating the 28 State Members of the European Union.