DEREK JACKSON ASSOCIATES

PATENT AND TRADE MARK ATTORNEYS

INTERNATIONAL (MADRID PROTOCOL) TRADE MARKS

The UK is party to the Madrid Protocol enabling International trade mark applications to be filed at the UK Patent Office in one language and covering a number of countries.

An International registration is subject to a number of restrictions.  For example, an International registration must be based on one or more applications or registrations in a Madrid Protocol country where the applicant lives, carries on business, or is of that nationality.  This is called the "home country".  Consequently, an International registration cannot cover the home country.

Each of the countries designated in the International registration examines the registration to determine whether it complies with local law.  If there is n o refusal within 18 months, or if refusal is subsequently withdrawn, the International registration has the same effect as a national registration in that country.

Click here for a list of countries.

ADVANTAGES AND DISADVANTAGES

An International registration can be cost effective to file, but if there are any refusals it is necessary to appoint a local attorney and there will be no savings.

The major drawback of an International registration is that it is dependent on the application or registration in the home country.  If that application should lapse, be refused or be withdrawn for any reason within five years of the International registration, the International registration is cancelled.  In this event it is possible, but costly, to separate the International registration into individual national registrations.