The Madrid Protocol: To Madrid or not Madrid? Why the mark itself matters

If there’s one rule of thumb we have for filing internationally via the Madrid Protocol – it is that there is no rule of thumb. At Sortify.tm we think about the ins and outs of filing trademark applications around the world every day (after which we typically enjoy an in-house brewed craft beer)!  We don’t always recommend using Madrid and we don’t always recommend NOT using Madrid.

One important factor you should consider when deciding whether to use the Madrid Protocol is the nature of the mark itself. We’ll cover other factors (particularly the goods and services specifications) in later posts.

Like most attorneys, the main reason we recommend Madrid to clients is because it can make the process of filing overseas cheaper and less complex. We tell them the process is centralized through to examination. After that, it involves country by country examination. However, the process only remains centralized as long as no objections are raised.

It follows that the Madrid Protocol works really well when you know that you can limit the risk of objections – otherwise the supposed advantages of reduced costs and administration can be rapidly undone.

A mark that is clearly registrable is a good candidate for a Madrid application. Such marks include:

• Highly distinctive words or logos
• Marks which you know (from searching) are unlikely to attract citations or oppositions
• Follow on marks – where your client already has global protection for a highly similar mark and is filing for a slightly modified version (to avoid non-use issues). Such applications are less likely to get objections (assuming the applicant is identical!)

When objections are inevitable, all the benefits of Madrid are voided. Unsuitable marks include:
• Marks that lack distinctiveness
• Marks that must be customized in different jurisdictions – eg marks that contain localized language or different levels of stylization
• Marks subject to co-existence agreements requiring limitation of some form in some markets but not others
• Series marks – these are not allowed under Madrid
• Non-traditional marks (eg sound/ taste/ fragrance marks) – each country’s practice is different and the centralized process has no benefit

Registration Roulette

But wait. There’s another situation where Madrid can be useful that we refer to as “Registration Roulette”. And it goes against everything we’ve said above 😊

This is where your client has a mark which is not a “clearly registrable” mark but they’ve obtained a home registration (possibly on the basis of acquired distinctiveness). The Registration Roulette strategy is to file a one-shot application via Madrid and wait and see what gets through. The results can be surprising!

Where objections are raised in different countries, you simply choose not to respond. Where a client has a limited budget, the Madrid Protocol system might just make it affordable enough to spin the wheel.

In our next posts, we’ll cover another factor that should be considered before using Madrid – the goods and services specifications, a subject very close to our hearts here at Sortify.tm. 

We also have an webinar series, where we address these topics and offer helpful tips as attorneys who’ve been there.

Watch this recorded webinar – Avoid or Embrace? Tips for getting the most out of the Madrid Protocol for more on this topic.