The Madrid Protocol and WIPO, what is it and how does it work?

We’re often asked how one might go about securing worldwide trade mark protection. Unfortunately, it’s not terribly easy as there is no such thing as a worldwide trade mark, instead trade marks are jurisdictional, and so you need to secure them on a country by country basis, with few exceptions (e.g. it’s possible to secure trade mark protection across all EU Member States with a single EU trade mark). As a result, various countries (131, at the time of writing) have signed up to an international treaty called the Madrid Protocol which makes securing international protection for a brand somewhat easier and more cost effective than the direct route.

The general idea is that an applicant in a member country, let’s say the UK, can apply for a trade mark in their home jurisdiction and then register it via the World Intellectual Property Office (“WIPO”). WIPO allows the applicant to secure an international registration (“IR”) which can then be replicated in other countries which are also party to the Madrid Protocol. Most major jurisdictions have signed up to the protocol (covering purportedly 80% of world trade) so, for example, a UK applicant could register its trade mark in the UK, secure an IR via WIPO and then make subsequent designations in jurisdictions such as the EU, US and China, ultimately ending up with fully enforceable trade marks in each of those jurisdictions.

By using the WIPO system applicants tend to secure their rights for a lower cost than with direct applications, providing that a number of designations are being made, even though an extra fee is payable to WIPO. The management of the portfolios also tends to be cheaper as actions such as renewals and assignments are centralised.

It sounds great right? Well yes, it is a popular system but it’s not without its downsides. The two biggest tend to be speed and risk. The process of securing a fully registered trade mark in, say, China is slower via the WIPO route compared to the direct route, typically by a number of months. This can obviously be an issue if you’re in a race to expand your protection and in these circumstances direct applications may be best. Also, the WIPO route can carry some risks, mainly to do with the vulnerability of your subsequent designations if your ‘base’ filing (i.e. the one in your home jurisdiction) fails. Without the base the subsequent designations can’t proceed and so this can severely curtail your expansion plans.

In view of the above, the WIPO route is certainly worth careful consideration, but it would be sensible to obtain specialist advice before deciding on your filing strategy. Fortunately, Briffa’s expert trade mark lawyers are on hand to assist, just fill out our contact form to get in touch.