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Archived updates for Tuesday, November 09, 2004

Should I File Under the Madrid Protocol?

According to an article by Lisa Peller London, updated in October 2004, the advantages of the Protocol include:

  1. No need to engage local counsel to file applications, thus saving attorneys fees at the initial filing stage
  2. No need to translate filings into local languages, as English is
    accepted for all filings
  3. No need to provide such supporting documents as Powers of
    Attorney, application forms, prints of the mark, or Certificates of
  4. Centralized recordation of assignments, change of name, change of
    address, and renewals, such that one filing through WIPO is effective
    in each country for which registration was sought, thus saving
    considerable expense and paperwork

The disadvantages of the Madrid Protocol include:

  1. Restricted Goods and Services: Because the USPTO requires
    narrowly drafted, highly specific lists of goods and services, those
    restrictions carry over to the related Madrid application.
  2. Dependency: The International Registration is dependent on the
    home-country or ?basic? application or registration, allowing for a
    central attack. However, the Madrid Protocol allows applicants to ?transform? their individual extensions of a cancelled International Registration into national applications for an additional fee within three months of the cancellation
  3. Supplemental Registrations can not serve as the the basis
    for an International Registration.
  4. A mark cannot be amended in an International Registration, but may be amended in some countries.
  5. Not all countries of interest belong to the Madrid Protocol. Significant absences include Canada and all of the countries of Latin America and South America.
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