Lecturer: Adv. Naomi Assia INTA Annual Meeting 14-18 May 2011

Lecturer: Adv. Naomi Assia INTA Annual Meeting 14-18 May 2011 San Francisco

The Madrid Protocol is an International treaty allowing a trademark owner to seek registration in any of the countries that have joined by filing a single application, called an “International Application”.

Israel signed the Madrid Protocol in 2003 and entered on 1st September 2010. The delay was caused by technical and computing problems at the Israel Patent Office.

Statistics from 2008-2011 show that there is a 41% increase in classes that have been requested. Since entering the Madrid Protocol, there is a dramatic decrease in direct foreign applications

Counties that are not predisposed to register IP rights rigorously, will be effected by the Madrid Protocol. Trademarks that have previously been registered in another counties, will now automatically be extended. For example, India is known to be such a country, and the effect is already being felt on small and medium businesses, even though they have not yet joined the MP.

If an Indian firm has not registered it’s trademark, they will have to start selling under a new brand name not resembling the existing one. If the Indian firm has also registered, the Courts will decide on the matter depending on who can prove the earliest use of the trademark.

From 1st September 2010, multi class applications are accepted in Israel. For every additional class request, cost is reduced. The examiner sees the classes as one packages so if he rejects one of the classes, the whole package is rejected. A request can then be made to examine each class separately. Priority date is of the original package. If each class is accepted, applicant can then request that all classes are packaged together again in order to save costs with renewals

If there is a class which could be a problem, it is better to file separately at the start and not as part of a package.

It takes 5 years to get an independent Trademark. If the original International Application is allowed to lapse, the national application lapses as well. If the international applications lapses, the applicant can transfer his right into a national application, allowing him to keep the priority date.

Attorneys fear loss of income as there is no need for a local address unless an office action is issued or contents are stopped at customs. In those cases, a local attorney needs to be present. Difficulty in persuading companies to file according to the Madrid Protocol.

Companies will not be able to transfer the trademark to someone else if they do not live in the country, do business in the country or are citizens of that country. Any language besides English, French or Spanish can cause a problem in the international application. The disadvantage in Israel is as applications are filed in both Hebrew and English but only the English is relevant in any International application.

Applicant can file in 2-3 designating countries at the beginning and can always add designating countries as his needs grow or as the Madrid Protocol expands. Certain fees are no longer charged by national offices i.e. POA, Transfer of Ownership, etc.

Who knows One”: One single application form One language One set of fees to One office One registration number One renewal date One POA One attorney

One set of fees to one office, either the international bureau or a national office who accepts payment. Israel’s Patent office does not accept payment and therefore, the applicant needs to make payment directly to the International bureau.

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Lecturer: Adv. Naomi Assia INTA Annual Meeting 14-18 May 2011 San Francisco