Madrid Protocol: Obtaining and Maintaining International Trademark Protection

Filing Procedure, Deficiency Notices, Subsequent Designations, Application Amendments, and More

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, September 20, 2018

Recorded event now available

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Program Materials

This CLE webinar will guide IP counsel on the Madrid Protocol, including the process, how and where to file, amending an application, and dividing a registration. The panel will examine how to respond to a deficiency notice from WIPO, apply for subsequent designations, and use the e-renewal process. The panel will also discuss the limitations or drawbacks of the system.

Description

The Madrid Protocol provides a mechanism by which trademark applicants can seek protection in all Madrid Protocol countries (101.0 contracting parties). However, while there are some benefits, such as cost savings and multi-class registrations in countries which only allow single class applications, there are disadvantages and risks too.

Such risks include the reliance of an international application on an application filed with or a registration issued by the Office of Origin, the limitations on the identification of goods, and a five-year dependency period.

Counsel must understand the ins and outs of obtaining, maintaining, licensing and enforcing registrations through the Madrid system.

Listen as our authoritative panel offers guidance on navigating the Madrid Protocol, including the mechanics of the process, how and where to file, amending an application, and dividing a registration. The panel will examine how to respond to a deficiency notice from WIPO, subsequent designations, differences among countries in handling certain aspects of Madrid designations, and the e-renewal process. The panel will also discuss the limitations or drawbacks of the system.

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Outline

  1. Mechanics of the Madrid Protocol
    1. How and where to file
    2. How the process works
    3. “18-month” rule
  2. Responding to deficiency notice from WIPO
  3. Subsequent designations and differences among countries in handling certain aspects of Madrid designations
  4. Amending an application
    1. For only one country
    2. For multiple countries
  5. How to divide a Madrid registration
  6. E-renewal process
  7. Limitations or drawbacks of the system

Benefits

The panel will review these and other high priority issues:

  • What are the advantages and disadvantages of filing under the Madrid Protocol?
  • What are the differences among countries in handling certain aspects of Madrid designations?
  • What steps should counsel take to amend a trademark application for one country? For multiple countries?
  • How should counsel utilize the Madrid Protocol to protect trademarks worldwide?

Faculty

Grahn, Barbara
Barbara J. Grahn

Partner
Fox Rothschild

Ms. Grahn counsels clients in a range of trademark, copyright and advertising matters. She handles U.S. and...  |  Read More

Kunz-Hallstein, Roberto
Roberto Kunz-Hallstein

Partner
Dr. Kunz-Hallstein Rechtsanwälte

Mr. Kunz-Hallstein practices in all fields of intellectual property, especially in trademark prosecution and...  |  Read More

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