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TM Cloud Dealing with Madrid Protocol IR Registrations

TM Cloud Dealing with Madrid Protocol IR Registrations

The Madrid system originated in 1891, and recently reached the milestone of 100 member countries with the accession of Indonesia. For many years membership was concentrated in continental European countries, and a new lease of life was triggered by the adoption of the Madrid Protocol in 1989. The United Kingdom joined in 1995 and the United States in 2003.

Using Madrid for multiple national trademark filings is now mainstream; it is quick, easy and cost effective (just check the box) even for the traditionally “difficult” jurisdictions. But it does pose record keeping and docketing challenges.

TM Cloud is designed to provide the user with all the information needed to ensure that your Madrid applications and registrations are complete, accurate and kept up to date; and that you are aware of the milestones, mine fields and deadlines affecting your IR marks.

For each International registration, TM Cloud provides a set of three interlinked records;

The base application or registration

The WIPO central registration

A series of individual trademark records, one for each designated jurisdiction.

Creating the set of IR records in TM Cloud is simple and automatic; just download the WIPO record from Madrid Monitor, and the complete set is automatically created and docketed. A unique section in the main trademark record is devoted to showing all the critical data.

Critical information:

  • Publication Number and Date: the original WIPO registration
  • Date of recording: the date from which the Refusal Period runs
  • Central Attack Expires: the date on which the designations become independent of the base registration
  • Expected Expiry Date: the renewal due date, which also appears on the docket
  • A list of the designated jurisdictions, with a link to the individual records in TM Cloud

A grid provides more data for each designation:

  • The text of all available Gazette notices, from which the status can usually be inferred.
  • The length of the Refusal Period
  • The date the Refusal Period ends
  • A Refresh button to automatically update all this information.

Special reports which list all the designations with the status of each are also available for WIPO records as part of the Excel Reports menu.

There is also a button to access the new “Contact Madrid” WIPO customer support service. Clicking the button takes you to the WIPO form to make an enquiry or submit a form or response to the Madrid Registry.

The Madrid Monitor website provides a wealth of information and access to documents, but there is one critical omission: it does not tell you directly the status of the designations. To figure out the status of each designation you have to hunt around the record and then check the notifications in the Official Gazette. Even then, the information needed may not be there for some jurisdictions.

In 2017, some 55,709 Madrid Protocol applications were filed, 7999 of which originated in the United States. There is still plenty room for growth.