The international trademark registration system is based on the concept of extending the territorial scope of a domestic (basic) trademark. Essentially, the basic trademark is replicated in other designated countries.
However, this very concept of territorial extension is the greatest weakness of the Madrid System. If the basic trademark becomes invalid for any reason, the entire international registration will also be invalidated.
When the Basic Trademark Is Invalidated
An example of this is when an international registration is based on a domestic application that has not yet been registered, and the domestic application is later rejected.
Nowadays, many companies launch their brands simultaneously in both domestic and international markets. This is especially true for large global corporations for whom a solely domestic brand launch is unrealistic. Consequently, trademark searches and registrations must be carried out across multiple countries at once.
Considering the lengthy registration process, it is often preferable to apply for both domestic and international registrations simultaneously. However, what happens if the domestic application is ultimately rejected?
In such cases, if the basic domestic application is invalidated, the entire international registration will also be nullified. While most countries offer a transformation mechanism to convert the international registration into separate national applications, this is almost equivalent to filing new applications from scratch, defeating the purpose of the international registration.
Therefore, it is recommended to base the international registration on a trademark that has already been registered or at least published in the official gazette.
Combining International Registration with Priority Claims and Accelerated Examination
What should you do if you must apply for international trademarks at the same time as the domestic application? Applying directly to individual foreign offices without using the Madrid System is an option, but doing so can be costly. The Madrid System can reduce application costs by over 70%, depending on the number of designated countries. Hence, abandoning this system altogether would be a missed opportunity.
In such cases, it is advisable to use priority claims and accelerated examination in combination with the Madrid System.
Note: While the terms “priority claim” and “accelerated examination” might sound similar, they are fundamentally different concepts.
- Accelerated Examination: This is a domestic procedure that speeds up the usual examination process (which takes about a year) to around three months. Most foreign jurisdictions do not offer accelerated examination.
- Priority Claim: This allows the filing date of a subsequent foreign application to be retroactively recognized as the filing date of the initial domestic application. It is a special benefit granted under international treaties.
To qualify for priority, the foreign application must meet certain conditions:
- The foreign application must be filed within six months of the domestic application.
- The applicant and the content (trademark and goods/services) must be identical in both applications.
How to Use Priority Claims and Accelerated Examination
Typically, it takes 12 to 18 months to receive an examination result after submitting a trademark application. However, with accelerated examination, the result is guaranteed to be delivered within two months of the decision to grant accelerated examination.
If you apply for accelerated examination at the same time as the domestic application, you can expect a result within three months. Once the trademark is published (or registered), you can proceed with the international registration while claiming priority.
By following this strategy, the filing date of the international application is backdated to the domestic application date, eliminating any disadvantages from filing delays. Additionally, since the domestic application has already been published (or registered), there is no risk of the international registration being invalidated.