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Latest members of International TM System

By Sarah Chatterley.

The International Register (or Madrid Protocol), is an International method of registering a trade mark in a co-ordinated manner,  in multiple territories. It offers a cost-effective procedure for obtaining TM registrations. The number of members of this scheme is steadily increasing with India, Rwanda and Mexico being the last to join in 2013.

The International Registration System co-ordinated by WIPO is different to the Community Trade Mark system. where an application covers all 28 (and increasing) members of the EU, and can be challenged in total by a prior right in just one territory.

An International registration must be based on a “home” application or registration, which, in the case of UK individuals or entities, means one filed at either the UK Intellectual Property Office (UKIPO) or the Community Trade Mark Office (OHIM). The application can be filed by Coulson & Rule and will not require the instruction of foreign associates unless objections or oppositions are raised.

Countries themselves are seeing the benefits of the system and are signing up to membership. There are currently 92 members, including the EU, encompassing all 28 territories with just one designation. India joined on 8 July 2013 which made it the 14th of the G-20 countries to join so far. New members which also joined in 2012/13 are Columbia, Mexico, New Zealand (not including Tokelau), Rwanda and the Philippines.

The advantage of new member territories joining the Madrid Protocol gives UK individuals and firms easier and more cost-effective access to registering their trade marks internationally (and the Madrid Protocol is also often a quicker route than using the national filing system). A downside is that, conversely, it also gives the individuals and enterprises of the new member territory great assistance in their reach for filing applications for protection beyond their home turf, ie into the UK and Europe.

As the list of members of the Madrid Protocol grows, it is ever more important to register your trade mark now, rather than wait until it is registered by another and have to challenge their entitlement to it in your territory.

If you would like more information on the International Register (Madrid Protocol) route for registering your trade mark, please contact us on 01788 547 389.



This news item may contain information of general interest about current legal issues, but does not contain legal advice.