This article explores the responsibilities tied to member countries of the Madrid Protocol concerning trademark maintenance. Although the majority of the member countries typically require international registrations to be renewed every 10 years from the initial filing date, some member countries impose additional maintenance criteria.
In recent years, the popularity of the Madrid Protocol has surged among trademark owners looking to protect their trademarks across numerous countries with a single International Registration (IR). Presently, the Madrid Protocol has 114 member countries. In fact, the World Intellectual Property Office’s (WIPO) statistics reveal that these members collectively account for over 80% of global trade, explaining the widespread adoption of IRs.
If a trademark owner meets specific eligibility criteria in their home country, their IR can extend to one or more member countries. Nevertheless, it’s essential for trademark owners to be aware that specific member countries have ongoing usage obligations to maintain their trademarks. Failing to adhere to these requirements may result in the abandonment of the application or registration.
These countries include:
United States (USA)
In the USA, although proof of use is not mandatory for registering a trademark via the Madrid Protocol, registrants must submit a declaration of use, along with supporting evidence (or excusable non-use), between the 5th and 6th year following the registration date noted on the US Registration Certificate. Subsequently, another declaration of use (or excusable non-use) must be filed before the expiration of the 10th year from the registration date, and subsequently at ten-year intervals. These declarations should be filed directly with the United States Patent and Trademark Office (USPTO).
Cambodia
In Cambodia, an affidavit of use (supported by relevant evidence) or an affidavit of non-use must be filed with the Trade Marks Office within the 6th year from the registration date.
Philippines
To maintain a trademark’s designation in the Philippines, the registrant must submit a declaration of actual use, supported by evidence, within 3 years following the filing date of the international registration. If the designation in the Philippines is a subsequent designation, this timeframe is calculated from the date of the subsequent designation’s recordal. These declarations must be submitted directly to the Intellectual Property Office of the Philippines. To ensure the designation’s validity, a declaration of actual use, along with evidence, must also be filed within one year from the 5th anniversary of the mark’s registration.
What Steps Should You Take?
If you own an International Registration, it is advisable to review your portfolio and maintain meticulous records of the maintenance requirements for each country. This proactive approach will help prevent the abandonment of your designations.
If you have any inquiries regarding your international trademark portfolio, including maintenance deadlines for designations in the aforementioned countries, please don’t hesitate to reach out to us.
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