What are the benefits of filing under the Madrid Protocol?
The key benefit of filing under the Madrid Protocol is that you can take your existing Australian trade mark registration, and then roll it out into any of the ‘Madrid’ member countries by submitting one single application. This is usually simpler and cheaper than directly applying to each country. Especially if you want to register and trade across a wide number of jurisdictions.
Assuming your international registration is granted protection in the countries you designate, your trademark will have the same protection as if you’d filed it there in person (ie as a resident).
Once you’ve filed within WIPO’s Madrid system, you’ll also be able to make subsequent designations in other Madrid member countries at a later date. That’s handy when economic conditions change, or new countries join Madrid, or if you’re simply expanding business into new markets.
Another benefit of filing under the Madrid Protocol is that you don’t need to have an address for service within the other countries when you file your application.
Plus, when it comes time to change or renew you overseas registrations, you’ll only need to make a single request.
About ‘priority dates’
The priority date is simply the date of your earliest application for a given trademark. That’s the date from which your trademark will be valid. If you then file overseas through Madrid within six months of the priority date, most countries will grant you the same priority date as your original trademark. That means your protection is backdated all the way to your original filing date. It’s especially helpful if you have a rapidly growing business that’s drawn the attention of overseas copycats.
The six month filing period also gives you a reasonable amount of time to plan and budget for your foreign trade mark requirements.
That said, it’s a strict six month time limit. You can’t get it extended. If you do file after the six months have passed, you can still register your brands. It’s just that you can’t claim the priority date of your earlier Australian application. The foreign applications will be given their own separate priority dates (ie based on the date you submitted the application in the respective jurisdictions).
Naturally, we’re happy to help you with advice and assistance if you need to file a trademark application overseas.
Our previous post discussed the Madrid Protocol and how it works.
Our next post will discuss the the requirements for filing an ‘international’ application.