Maximizing Your Brand's Potential Through The Madrid Protocol

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Maximizing Your Brand's Potential 

Through The Madrid Protocol


Dareem Scipio*


Every trade mark you build, adds to the financial value of your business, much more than your tangible assets. ~ Kalyan Kankanala

Trinidad and Tobago acceded to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) on October 12th 2020.[1] The protocol subsequently took effect in January 2021.[2] The Madrid Protocol is an international treaty that aims to streamline the process of registering trade marks internationally by providing a quick, convenient and cost effective way for trade mark holders to secure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees and in one currency.  

The Madrid Protocol presents an excellent opportunity for individuals and businesses in small economies such as Trinidad and Tobago to fully capitalize on the value of their brand by securing protection in regional and international markets. It is trite law that trade mark protection and the rights associated with such protection are territorial in nature.[3] In order words, a trade mark is only binding and/or enforceable within the country in which it registered subject to one exception, that is, where the mark has acquired a renowned status internationally. This therefore means that an individual in order to obtain international protection for their mark must file separate applications in all the territories where they wish to have it protected.[4] Consequently, they would also be subject to separate filing procedures and the inefficiencies of multiple filings. Indeed, the failure to register local marks internationally can see other persons exploiting those marks to their benefit without any means of redress for the original owner. 

Undeniably, the above procedure for international registration of marks is burdensome and time consuming. Luckily, the Madrid Protocol provides individuals and businesses with an opportunity to escape this bureaucracy by providing a one-stop solution. The Protocol provides comprehensive coverage through its membership of 105 states and two regional intergovernmental organizations (The European Union and the African Intellectual Property Organization- OAPI).[5] Importantly, the membership of the Protocol is responsible for over 80% of the global trade market.[6] Positively, Trinidad and Tobago’s largest trade partners are also included in the regime which reinforces the necessity and usefulness of the Protocol to our national interests. 

So, what are the benefits of the Madrid Protocol to individuals and businesses? Firstly, it provides a central filing system to seek protection in various territories replacing the need for individual filing in all territories where an individual wants protection. Such a system also removes issues such as language barriers, currency issues (demand and supply) and variances in procedures and requirements. Importantly, the entire process is managed through collaboration between the local Intellectual Property Office (IPO) and the World Intellectual Property Organization, thereby ensuring that the process is as convenient as possible.[7]

Secondly, the Protocol offers a central management system of the rights associated with the mark. Thus, once a mark is officially accepted, registered and protected by one or more of the members signatory to the Protocol, a trade mark owner will be able to monitor and manage his rights through one central portal.[8]Benefits of a central management system include the ability to renew a mark in several territories at the same time and at the same place,  the ability to extend protection of your marks to new markets hassle free, and lastly, the ability to make changes to your trademark registration and have those changes seamlessly updated and recorded across all territories.[9]

Thirdly, the Protocol provides a platform for individuals and businesses to gain international brand exposure and can be used as a means to acquire an international reputation while also generating goodwill for your business. This exposure of course can open the door to other opportunities such as franchising and other partnerships with other like-mined entrepreneurs throughout the world.[10]

In conclusion, the Madrid Protocol is an extremely useful tool for individuals and businesses wishing to expand their reach into the global market. The Protocol is a one-stop solution to the challenges and barriers of international trade mark registration utilizing a user friendly, convenient and cost-effective approach to trade mark registration. It is therefore imperative that businesses and individuals capitalize on the opportunities that the protocol provides.

 

Individuals and businesses in Trinidad and Tobago wishing to get more information on the protocol and the procedure for registration can visit the Trinidad and Tobago IPO website @ http://ipo.gov.tt/.

  

* Contact Dareem Scipio at studentscipio@gmail.com

[1] WIPO, ‘Trinidad and Tobago Joins the Madrid System’ (2020)

<https://www.wipo.int/madrid/en/news/2020/news_0020.html> accessed 23 July 2022. 

[2] ibid.

[4] ibid.

[5] ibid. 

[6] ibid.

[7] ibid. 

[8] ibid.

[9] ibid. 

[10] ibid. 

 

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