As we all know by now, the Madrid Protocol system provides a pretty neat, centralised process for your overseas trade mark applications. If used selectively and carefully, Madrid can be a really useful tool for you and your clients -see my earlier blogs on this point:
- To Madrid or not Madrid? Why the mark itself matters
- To Madrid or not Madrid #2: What about the Goods and Services?
It’s long been thought that one weakness of this centralised system is “Central Attack”. This is where the home registration is attacked (within five years of the international application date), the whole house of cards, which is built upon that home registration, may come tumbling down.
The good news is that this view is outdated. It’s a throwback to the original Madrid Agreement. Under the Agreement, this was certainly an issue and something that in fact put off a number of countries joining. Under the Madrid Protocol, once you’ve got your registration in your home country, the central attack issue is now manageable, and not something that you necessarily need to lose sleep over. You may lose some money, but not sleep.
“Transformation” is the name of the game.
This is the name of the process whereby, if your international registration is cancelled, you can convert or transform this registration into multiple national and/or regional applications, to allow each to proceed in the originally designated countries or regions.
- Transformation must be carried out within three months of the cancellation
- You must have the same goods or services specification as the original application
- The transformed applications will retain the original priority date of the international application
- The process is subject to the vagaries of each local territory. Transformation is not a centralised process; you need to do this in each designation separately
- If a country is only a party to the Agreement and not the Protocol, transformation isn’t possible (eg Algeria, Kazakhstan, Sudan and Tajikistan). For an exhaustive list of who belongs to what, check out the WIPO list of contracting parties
- Transformation should also be considered. For example, if your home registration is narrowed in scope during those first five years, and any of the culled goods or services are critical to your business
what if your home application isn’t a registration?
We had a great question put to us during our Madrid Protocol webinar on Central Attack.
What is the case if, at the end of the five-year dependency period, the home registration had not yet progressed to registration? Is this actually something that would bring down our house of cards?
We did a bit of research on this point afterward and here’s what we found.
It looks like if the home application is still pending at the five-year deadline, that is not itself a problem. The central attack only kicks in when the application lapses – so there are no automatic actions at the five-year period.
- If the application ultimately proceeds to registration, then there is no problem.
- If it is still pending at the five-year deadline as a result of an appeal against a refusal, an invalidity or an opposition, then if that action leads to refusal, the international application goes down too once the refusal is final.
- However, it seems there may be a gap where the application is genuinely pending at the end of the five-year period (not yet refused to the point of requiring an appeal). If this happens, central attack doesn’t apply even if the application is then later rejected. It seems a long shot as the IP Office should not allow the application to be pending (short of an appeal) five years out from filing – but I’m sure stranger things have happened and there are a couple of Madrid Protocol member IP Offices with big backlogs.
If this isn’t enough information for you on this point, then you need to find a new hobby! Failing that, please see below for actual provisions on these points.**
The Madrid Protocol – final thoughts
Transformation under the Madrid Protocol is a fiddly and potentially expensive process. But it is an option.
We think financially it should be thought of as simply losing the financial gain (and the long term portfolio management benefits – like the single renewal fee and easy assignment) you achieved from filing Madrid in the first place, more or less. The threat of Central Attack doesn’t justify deciding against a Madrid Protocol filing – unless you really think the home registration is vulnerable or likely to be attacked.
If you’re interested in learning more about the Madrid system – when to avoid it and when to embrace it, check out our recent webinar ‘Avoid or embrace? Tips for getting the most out of the Madrid. Alan also offers some tips around navigating the system and addresses any concerns you may have.
**From the Protocol itself
Period of Validity of International Registration; Dependence and Independence of International Registration
(1) Registration of a mark at the International Bureau is effected for ten years, with the possibility of renewal under the conditions specified in Article 7.
(2) Upon expiry of a period of five years from the date of the international registration, such registration shall become independent of the basic application or the registration resulting therefrom, or of the basic registration, as the case may be, subject to the following provisions.
(3) The protection resulting from the international registration, whether or not it has been the subject of a transfer, may no longer be invoked if, before the expiry of five years from the date of the international registration, the basic application or the registration resulting therefrom, or the basic registration, as the case may be, has been withdrawn, has lapsed, has been renounced or has been the subject of a final decision of rejection, revocation, cancellation or invalidation, in respect of all or some of the goods and services listed in the international registration. The same applies if
(i) an appeal against a decision refusing the effects of the basic application,
(ii) an action requesting the withdrawal of the basic application or the revocation, cancellation or invalidation of the registration resulting from the basic application or of the basic registration, or
(iii) an opposition to the basic application
results, after the expiry of the five-year period, in a final decision of rejection, revocation, cancellation or invalidation, or ordering the withdrawal, of the basic application, or the registration resulting therefrom, or the basic registration, as the case may be, provided that such appeal, action or opposition had begun before the expiry of the said period. The same also applies if the basic application is withdrawn, or the registration resulting from the basic application or the basic registration is renounced, after the expiry of the five-year period, provided that, at the time of the withdrawal or renunciation, the said application or registration was the subject of a proceeding referred to in (i), (ii) or (iii) and that such proceeding had begun before the expiry of the said period.
(4) The Office of origin shall, as prescribed in the Regulations, notify the International Bureau of the facts and decisions relevant under paragraph (3), and the International Bureau shall, as prescribed in the Regulations, notify the interested parties and effect any publication accordingly. The Office of origin shall, where applicable, request the International Bureau to cancel, to the extent applicable, the international registration, and the International Bureau shall proceed accordingly.
From the Madrid guide
Ceasing of Effect During the Dependency Period
92.01 For a period of five years from the date of the international registration, the protection resulting from the international registration remains dependent on the mark registered or whose registration has been applied for with the Office of origin (basic application, registration resulting therefrom, or basic registration). The protection resulting from the international registration may no longer be invoked if, or to the extent that, the basic registration, or the registration resulting from the basic application is cancelled, renounced, revoked, invalidated or has lapsed, or if the basic application is the subject of a final decision of rejection or is withdrawn, either within that five-year period or as a result of an action commenced within that period.
92.02 This dependence is absolute, and is effective regardless of the reasons why the basic application is rejected or is withdrawn or the basic registration ceases to enjoy, in whole or in part, legal protection. The process by which an international registration may be defeated for all countries in which it is protected, by means of a single invalidation or revocation action against the basic registration has become generally known by the term “central attack”.
92.03 Under the Protocol, there is an increased risk of the holder who chooses to base his international registration on an application with the Office of origin losing his protection as a result of the basic application ceasing to have effect. This need not be the result of a “central attack”, in the sense of an action brought by a third party. The basic application may be refused protection, totally or partially, on absolute grounds or because of the existence of a prior right cited ex officio in the examination procedure, or as a result of an opposition by the holder of such earlier right in that territory. In all these cases, and provided the decision in respect of the basic application is final (that is, no longer subject to review or appeal), the Office of origin is required to request the International Bureau to cancel the international registration, either totally or partially.