A new reason to consider Madrid Protocol


The reader will be familiar with the many factors to be explained to one’s clients to help them decide whether to use Madrid Protocol on the one hand, or ordinary Paris Convention national filings on the other hand, to accomplish foreign filings.  Now, starting July 1, 2017, there will be one more factor to be taken into account.  Madrid Protocol will have a convenient mechanism by which the holder of an International Registration may request a recording to introduce an indication concerning its legal nature or to change that indication once it has been recorded.To understand this July 1 change, it may be helpful to recall some of the well-known benefits of Madrid Protocol, namely the one-stop-shopping mechanisms that are available to record assignments and address changes.  With an ordinary (non-Madrid) trademark portfolio, when a trademark owner changes its address, the change must be recorded individually at each of the many national trademark offices involved.  This can be costly and is potentially error-prone.  Similarly with an ordinary portfolio, the recordation of an assignment must be carried out at each national trademark office.  Depending upon the trademark office involved, such a recordation can be prodigiously expensive.

In contrast, for an International Registration, the holder need merely file a single form at the International Bureau, and pay a single fee (CHF 150) and the recordation takes place in all designated offices.  That single form may be employed to bring about the change as to multiple International Registrations.

The news for today is that as of today, such a one-stop-shopping recordation may be accomplished with respect to a change in the legal nature of the holder.  An example of such a change would be from a limited liability company to a corporation.  To do this, use Form MM9.  You can read WIPO’s announcement here.

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