Why you can’t always count on a subsequent designation being available?

A member of the Madrid Protocol listserv asked:

I would like to file an e-subsequent designation for India.  The country of origin is the EU and the owner is in an EU-member country.  A [Madrid Protocol] application was filed in 2011 designating countries other than India.  On the e-Subsequent Designation application page, a number of countries are listed from which to choose to designate protection.  India is NOT listed as one of those countries.  Am I missing something?  Does anyone know why India does not appear in the list of countries to designate subsequent protection to?

I was fascinated to learn why it is that India is a member of the Madrid Protocol and yet an owner of an International Trademark Registration might not be able to carry out a subsequent designation to India. The explanation also offers a reminder how important it is to use an e-validated filing tool from WIPO rather than filing on paper.

When I saw this posting on the listserv, my first step was to review the list of member Offices.  Maybe there had been some misunderstanding?  Maybe India did not actually belong to the Madrid Protocol?  Was this the reason why our listserv colleague found herself unable to find an “India” box to check on the e-Sub-Des form?

And the clear answer from the list of member Offices is that yes, of course, India belongs to the Madrid Protocol.  Indeed it has belonged to the Madrid Protocol since July 8, 2013.  For more than four years, India has belonged to the Madrid Protocol.

Which then takes us back to the question presented.  Our listserv colleague was hoping to carry out a subsequent designation.  The colleague’s Madrid Protocol trademark application had been filed back in 2011.  At the time it was not, of course, possible to designate India because at the time, India had not been a member of the Madrid Protocol.

But that’s a main idea why there is such a thing as a subsequent designation.  The idea is that even if a particular country did not belong to Madrid Protocol at a time when an entity filed a Madrid Protocol application, maybe later that country would choose to join Madrid Protocol.  If so, then registrants might choose to try to extend protection to that country.

When the US joined the Madrid Protocol in 2003, that is exactly what happened.  Hundreds of registrants around the world chose to file subsequent designations to the US in the first year or so after the US joined.

So back to the question as presented.  Our loyal listserv member went to the WIPO web site.  She clicked on the e-sub-des system.  It asked her for her international registration number.  She filled in that field and clicked “proceed”, reaching the page where you can click to check a box to for the Office or Offices for which you would like to carry out a sub des.  And on that page there was no check box for India.  Why?

The answer turns out to be that when an Office joins Madrid Protocol, the Office is able to pick and choose which parts of the Protocol to join without making any changes, and which parts to join only to a certain extent.

The most visible aspect of this is the period of automatic protection.  If an Office joins Madrid Protocol, the default situation would be that an applicant gets automatic protection unless the Office says otherwise within 12 months.  But the Protocol provides that if an Office wishes, the Office can say that it wants 18 months (rather than 12 months) to make up its mind about a particular application.  It turns out that nearly all Offices do choose to say that they want 18 months to make up their mind.

As another example, if an Office joins Madrid Protocol, the default situation would be that the Office gets paid a fixed amount of money to do its work.  But if an Office wishes, the Office can say that it wants to be paid some other (larger) amount of money to do its work.  It turns out that most Offices choose to say that they want to be paid some larger amount of money.

Well it turns out that the Protocol permits an Office, upon joining the Protocol, to say that the Office does not want to permit subsequent designations for older International Registrations.  India said this as you can see here.  India said:

… in accordance with Article 14(5) of the Madrid Protocol (1989), the protection resulting from any international registration effected under this Protocol before the date of entry into force of this Protocol with respect to the Republic of India cannot be extended to it.

In plain language, if a registrant owns an IR dated prior to July 8, 2013, that registrant is not permitted to do a sub des to India.  The listserv member will have no choice but to hire trademark counsel in India to carry out an ordinary domestic Indian trademark filing.

That explains why the e-form on the WIPO web site did not offer an “India” check box to this listserv member.  The e-form is smart.  The e-form looks up the IR to see when it was filed.  And it uses that filing date to figure out whether or not to make a particular Office check box available.  The e-form noticed that the filer’s IR was dated from 2011, and the e-form noticed that 2011 is before July 8, 2013, and so it did not display the “India” check box for a sub des.

It turns out that India is not the only Office that imposed such a limitation.  Four other Offices have done this:

• Estonia (November 18, 1998)
• Namibia (June 30, 2004)
• Philippines (July 25, 2012)
• Turkey (January 1, 1999)

For each Office I list the date that limits filing a sub des.   So for example if your IR dates from before 1998, you could go to this online sub des form and you would see that none of these four countries is available to you.  All five check boxes would be conspicuous by their absence.

This brings us around to an important point.  Some practitioners still file Madrid Protocol applications and subsequent designations on paper.  They make use of Form MM2 (for a new application) and Form MM4 (for a subsequent designation).  If such a practitioner were to use the paper form MM4, the practitioner might have made the mistake of checking the India box.  The result would be embarrassing for the practitioner who would later have to explain to the client that the practitioner had made a mistake checking the India box.

The practitioner that chooses to use the online e-sub-des form will avoid such embarrassment, because the form does not permit such a mistake to be made.  For this and many other reasons, it is a Best Practice to use the online e-sub-des form.  Our listserv colleague is to be complimented for following this Best Practice.