Is the Madrid TM System really cost-effective?
Quote from angrymama77 on April 12, 2019, 6:50 amThe Madrid Protocol is said to be "... a cost-effective way for trademark owners to obtain trademark registration through a centralized filing procedure, in several countries simultaneously."
Does this mean that the Madrid Protocol will always be the less expensive option, as opposed to filing a bundle of national and/or regional applications?
The Madrid Protocol is said to be "... a cost-effective way for trademark owners to obtain trademark registration through a centralized filing procedure, in several countries simultaneously."
Does this mean that the Madrid Protocol will always be the less expensive option, as opposed to filing a bundle of national and/or regional applications?
Quote from ofqosp on April 12, 2019, 6:55 amFor smooth applications/registrations, filing an international application via the Madrid Protocol may in principle, be more cost effective since you file one application, rather than a bundle of national applications. There is no need to pay for translations or hire a representative in each country.
However, if issues arise during examination of an international application in a contracting party, this may reduce or eliminate savings.
Take for example, the United States, whereby the United States Patent and Trademark Office (USPTO) requires very detailed and specific descriptions to the goods and/or services claimed. More often than not, specification objections are raised against trademarks filed via the Madrid Protocol because the specifications claimed are too wide and not tailored to be detailed/specific enough to be deemed acceptable by the USPTO. Costs incurred during the examination stage, to overcome such specification objections may reduce or eliminate savings.
Overall, it might actually be cheaper to file a national application in the United States, with an acceptable set of detailed specifications to begin with, which will allow you to avoid a specification objection from being raised and avoid incurring additional examination costs.
The Madrid system does not circumvent local trademark laws. Objections therefore may be raised by IP offices of designated countries based on individual peculiarities or nuances in the examination approach adopted in each country. Whether or not the Madrid Protocol will be the less expensive option, as opposed to filing a bundle of national applications really depends on which countries you are seeking trademark protection in.
Quote from katieketchup on April 12, 2019, 9:54 am@angrymama77, you might also want to refer to an earlier post here about IRs (which is another name for Madrid Protocol TMs): https://ip-lawyer-tools.com/qa-forums/topic/ir-or-national-filing/
You also need to be aware that the Madrid Protocol system does not cover every country in the world (like Malaysia, Taiwan, Brazil). More often than not, Applicants will find themselves having to file a combination of IR+ national filings for the countries that they want. I don't really know whether this will be cheaper and more efficient or not.