In this article, we discuss the maintenance requirements of member countries of the Madrid Protocol. While most members only require that the international registration be renewed via the World Intellectual Property Office (WIPO) when it falls due (10 years from lodgement), some member countries have additional maintenance requirements.
The Madrid Protocol has in recent years become extremely popular with trade mark owners wanting to obtain protection for their marks in multiple countries under one trade mark application, known as an International Registration (IR). The Madrid Union currently has 108 members covering 124 countries and according to WIPO, these members represent more than 80% of world trade. It is therefore easy to see why IRs are now so popular.
Provided the trade mark owner satisfies certain eligibility criteria in the home country, the IR can include some or all member countries, however, trade mark owners should be aware that for some of these member countries, there are on-going use requirements to maintain the trade mark which, if not adhered to will result in the application/registration being abandoned.
These countries are:
In the USA, although a trade mark can be registered via the Madrid Protocol without proof of use, for the mark to remain registered, the registrant must file a declaration of use together with evidence to that effect (or excusable non-use) between the 5th and 6th year after the registration date shown on the US Registration Certificate. A further declaration of use (or excusable non-use) must be filed before the expiration of 10th year after the registration date and all subsequent ten year intervals from that date. The declarations must be filed directly with the United Patent and Trade Marks Office.
An affidavit of use (together with evidence to that effect) or an affidavit of non-use must be filed with the Trade Marks Office in Cambodia within the 6th year from the registration date.
To maintain the designation of a trade mark in the Philippines, the registrant must file a declaration of actual use of the mark with evidence to that effect within 3 years after the filing date of the international registration, or where the designation in the Philippines is a subsequent designation, from the date of recordal of the subsequent designation. The declaration must be filed directly with the Intellectual Property Office of the Philippines. To maintain the validity of the designation, a declaration of actual use together with evidence must also be filed within one year from the 5th anniversary of the registration of the mark.
What do you need to do?
If you are the owner of an IR designating the US, Cambodia and/or the Philippines, we suggest that you review your portfolio and ensure that you keep records of the maintenance requirement for each country so as to avoid the designations being abandoned.
If you have any questions concerning your international trade mark portfolio including the maintenance dates for designations in the above referenced countries, please contact us.