Further Expansion Of The Madrid Community

Author:Ms Cheryl Meijs, Boudewijn van Vondelen and Anne Marie Verschuur
Profession:NautaDutilh
 
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Saving costs on international trademark portfolios

Saving costs is of course of interest to any business. This is even more the case in the present economic climate where departments responsible for IP are also asked to cut costs without cutting corners. In that respect, international trademark registrations can be a viable solution: they are becoming more and more interesting as an increasing number of countries join the Madrid system (Mexico joins today, being the latest addition) and can be very cost efficient.

Already 89 contracting parties!

The World Intellectual Property Organisation (WIPO) continues to work hard to persuade as many countries as possible to join the Madrid system. New members in recent years are Oman in 2007, Ghana, Madagascar and Serbia in 2008, Israel in 2010 and Curacao, St. Maarten and the BES Islands (which became separate designated countries as a result of the dissolution of the Netherlands Antilles in 2010). 2012 was a bumper year for new accessions to the Madrid system when the Philippines, Colombia and New Zealand all joined the international registration system. With the addition of Mexico today, the number of contracting parties to the International registration system has reached 89. Mexico, a G-20 member, is in fact an interesting addition because it has a growing economy, interesting for investors and can now be covered by an international trademark registration with all the benefits the system brings. As of 2004, Spanish is one of the languages that can be used to file for international registration. Mexico is the fourth Spanish speaking country to join. These developments are expected to encourage further growth of the system in Latin America.

Advantages

An international registration is simple, efficient and cost effective. There is only one application, covering as many countries as required, in one language (instead of having to translate the list of goods and services into different languages) and attracting a single fee (instead of having to pay separate fees in different currencies and with variable exchange rates to each individual Office). It is also easy to apply for a territorial extension of the international registration to cover more countries if it is found at a later stage that protection in more countries is desired. Furthermore any changes subsequent to registration, (such as a change in the name or address of the proprietor, a total or partial assignment of the registration to a new...

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