International registrations, and provisional refusals

18. June 2019

By Mariano Tabanera, Senior Trademark Lawyer

International Registrations

Through the Madrid Protocol any national from a signatory country can file a trademark application through the World IP Office designating one or various other signatory countries, obtaining the registration of their mark in several countries with just one application. This saves time and money for the applicant.
In Latin America, Brazil, Colombia, Cuba and Mexico are signatories of the Madrid Protocol. Brazil will start implementing the Protocol in October 2019, and it will be possible to designate this country through WIPO.

Provisional Refusals

However, this poses some risks. Most times, the application is filed designating several countries without the recommended prior registrability and availability search reports, increasing the risks of provisional refusals from the national trademark offices.
When an applicant designates a country, a formal study of the mark is conducted, and sent to each of the national trademark offices designated, who also study the application. The national examination studies the intrinsic registrability of a mark, as well as the prior marks, in search for any absolute or relative grounds for rejection.
In case any are found, a provisional refusal is issued and served to the applicant through WIPO, and given a term to reply to it, including whichever argumentation, agreements and limitations the applicant may deem sufficient to overcome the objection.

Recent amendement to WIPO

Unfortunately, due to a recent amendment to WIPO regulations, any limitation or clarification to the applications must be made through WIPO, and not directly before the national Offices. As a result, the reply to the objection would require a higher expense, both in time and money.
In light of an amendment to the Mexican Trademarks Law, which came into effect last August 2018, coexistence agreements are now binding for the Examiners, as long as the trademarks are not identical. If the owners of the marks consider that there is no risk of confusion in case of coexistence, the IP Office is compelled to admit said coexistence.

Registering Trademarks through the Madrid Protocol

Despite the fact that registering trademarks through the Madrid Protocol is indeed a simpler procedure, the implications and possible consequences of this must be taken in consideration, and the necessary preventive measures (availability searches, possible negative connotations of words or designs, negotiations, agreements, limitations in scopes of protection) should be undertaken.
Lastly, it must be mentioned that, despite the simpler application procedure, Madrid Protocol designations tend to be longer procedures, as there is an international and a national stage, whereas national applications just have the latter.
All in all, designations of international registrations through Madrid Protocol are really useful, and they do simplify the registration procedure for applicants that want to protect their brands worldwide, but the national consequences must be taken in consideration. The professional advice of an IP expert in the region is always recommended in order to avoid conflict and dilations. Contact us to register a trademark without problems.

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