Update of the Madrid System in Hong Kong
Mar 2018 |
The Madrid International Trademark Registration System (hereafter “the Madrid
System”) will apply to Hong Kong as early as in 2019. This article is to provide
brief introduction of the Madrid System and the update of the same. |
Introduction: |
The Madrid System is a major international system that promotes the registration of
trademarks throughout the world. Its legal basis arises from the Madrid Agreement
Concerning the International Registration of Marks of 1891, as well as the Protocol
Relating to the Madrid Agreement (1989). The Madrid System provides a centrally
managed system for obtaining a number of trademark registrations in different
jurisdictions. Registration through the Madrid System does not constitute a uniform
registration, such as the European (EU) Trademark system; rather, it forms a series of
national rights through internationally registered international registrations. Madrid
System has provided mechanisms for trademark protection in many countries around
the world, more effectively than in individual countries or in individual jurisdictions.
The Madrid Protocol provides for the international registration of trademarks through
an application that covers multiple countries. Single registration covers a wide range
of countries with advantages in portfolio management and cost savings, rather than an
independent country registration portfolio. Madrid System now allows the filing,
registration and maintenance of trademark rights in multiple jurisdictions, provided
that the target jurisdiction is the party of the system. The Madrid System is
administered by the International Bureau (IB) of the World Intellectual Property
Organization (WIPO) in Geneva, Switzerland. As of 2017, the Madrid System
currently has 90 country members.
|
Advantages of Madrid System: |
- 1. The Madrid System provides a mechanism for a trademark owner who has an
existing trademark application or registration (known as a "basic application" or
"basic registration") in a member jurisdiction from WIPO to obtain its trademark
"International Registration" from WIPO. The trademark owner may extend the
protection provided to the international registration to one or more member
jurisdictions, referred to as "designation".
- 2. A useful feature of the Madrid System is that such protection can often be
extended to other jurisdictions at any time so that international trademark
protection can be extended to other member countries, or subsequent new
jurisdictions in Madrid System.
- 3. From a practical point of view, the main advantage of the Madrid System is to
allow trademark owners to submit trademark protection for any or all member
states by submitting one application in the home country and make any changes
(such as changing the name or address) or renewal of registration in all
applicable jurisdictions through a single management process, and achieve cost
savings.
|
Update of Madrid System in Hong Kong:
|
- 1. As soon as the Madrid System is in practice in Hong Kong as early as in 2019,
the brand owner can submit a single application in Hong Kong (i.e. home
jurisdiction), pay a set of costs, and specify one or more contract jurisdictions, to
extend the home application / registration overseas.
- 2. Hong Kong's accession to the Madrid Protocol will enable local companies to
expand their overseas business through a single channel and to more effectively
register and manage their trademarks. Multinational companies wishing to
register trademarks in Hong Kong can also use the Madrid System to expand
their geographical reach.
- 3. However, brand owners who are vested in Hong Kong (or China) will be subject
to Article 3bis of the Madrid Protocol because international applications
originating in Hong Kong cannot designate China or vice versa. In other
words, they must seek protection by registering their trademarks in either or both
Hong Kong and China.
|
|
|