From 11 July 2001 when the so-called Madrid Protocol comes into effect in this country, Australia will have a new system for the international registration of trade marks.

What is the Madrid Protocol?

The Madrid Protocol, in full, The Protocol Relating to the Madrid Agreement, is a system for the international registration of trade marks. The Madrid Protocol is administered in Geneva, Switzerland by the International Bureau of the World Intellectual Property Organization (WlPO).

What does the Madrid Protocol do?

The Madrid Protocol provides a more simplified, economic and efficient way to register trade marks internationally - instead of a trade mark owner having to file separate applications in each desired country, the Madrid Protocol will allow for an international registration through the filing of a single trade mark application at the Trade Marks Office of the applicant's home country and designating any number of the 51 countries currently party to the Madrid Protocol.

A list of these countries appears below.

Who can apply for International Registration?

Applicants who

• have a real and effective industrial or commercial establishment in, or

• are domiciled in, or

• are a national of a Contracting Party to the Madrid Protocol

can use the system.  Thus Australian companies, citizens and residents can file a single application at the Australian Trade Marks Office, designating the countries in which registration is desired.

The other main prerequisite for an international application is that the trade mark concerned be the subject of an existing Australian trade mark registration or pending application.

Procedure

While the trade marks legislation concerning the implementation of the Madrid Protocol has not yet come into force in Australia, the filing procedure for an application based on an existing Australian application or registration can be summarised as follows:

• International application filed at the Australian Trade Marks Office.

• Trade Marks Office checks details of the International application against those of the Australian application/registration.

• Trade Marks Office certifies International application and sends to International Bureau of WlPO.

• International Bureau checks International application for correctness.

• International Bureau registers International application and publishes the International registration in the WlPO Gazette of International Marks.

• International Bureau sends certificate of registration to holder and advises the Trade Marks Offices of the designated countries.

• Designated countries each examine the International registration in terms of their own legislation.

• If there is an objection, the designated country notifies the International Bureau which then advises the trade mark holder.

• When objections (if any) are overcome, the designated country will advertise the International registration for opposition purposes.

• If notice of opposition is filed, the designated country must notify the International Bureau.

• When all is in order, the designated country will give effect to the International registration as if it were a trade mark registered from a national application.

Duration and Renewal of an International Registration

An International registration is valid for 10 years and may be renewed for like periods by payment of the renewal fees to the International Bureau. Renewal may be sought any time within 6 months from the expiry date of the International registration.

Important Points to Note

An International registration will remain dependent on the home trade mark for a period of 5 years. The International registration will no longer be protected if the home registration is cancelled for any reason or if the home application does not mature into a registration. If this happens, the holder of the International registration can apply to "transform" the International registration into individual national applications with the same filing date as the International registration, before any of the designated Trade Marks Offices. Application to transform the International registration must be done within 3 months from the date of cancellation of the International registration.

Making Changes to the International Registration

The International Bureau can record changes to the International registration, including:

• Amending the statement of goods and/or services of the registration in some or all of the designated countries,

• Cancelling some or all of the statement of goods and/or services of the registration, e.g. for non-use of the trade mark,

• Changing the name or address details of the trade mark holder, or recording assignment of the registration to a new owner

Parties to the Madrid Protocol as at 1 September 2001:

Halford & Co.

May 2001