ISRAEL JOINS THE MADRID PROTOCOL

01.06.2010

During his visit to Israel on 31 May 2010, Mr. Francis Gurry, Director of WIPO (World Intellectual Property Organization) has formally announced Israeli adhesion to the Madrid Protocol. It means that on 1st September 2010, Israeli trademark owners will finally be able to file International Trademark Applications under the Madrid Protocol.

What is the Madrid Protocol?

The Madrid Protocol provides an alternative to national trademark filings. Under the Madrid Protocol, Israeli trademark owners will have the option to register a trademark in all or several member countries that have joined the Madrid Protocol (see list below) by filing a single international trademark application.

For example, this will permit an Israeli Applicant to make a filing in USA, Japan, China and
European Community countries by filing a single trademark application. It will not be necessary
anymore to use local Associates on a country-by country basis to effect a filing in these
countries.

What is the main advantage offered by the Madrid Protocol?

The principal benefit of the Madrid Protocol is of course the reduced costs (comparing to multiple
individual filings) as local associates will not be required anymore to effect the filing. Also,
renewal and/or changes of ownership will be recorded by WIPO in one single operation rather
than separately in each jurisdiction.

What is required to file an international application under the Madrid Protocol?

In order to file an international trademark application under the Madrid Protocol, the applicant
must own a trademark application or registration in ISRAEL for the identical mark with the same or
a wider specification of goods and services.

What is the primary disadvantage of the Madrid Protocol?

As noted above, in order to get an international trademark registration, an applicant must first
own an Israeli trademark application or registration.

The major problem of the Madrid Protocol is that the International trademark registration is
dependant on the Israeli basic application or registration for five (5) years from the
international registration date. For example, if the Israeli basic application or registration is
rejected or cancelled during these years, the International trademark registration will no longer
be effective and the international registration would need to be converted into multiple individual
national applications in order to maintain international application. (This conversion might be
very expensive depending on the number of designated countries).

After the five year period, the International Registration becomes independent and remains in force
even if the basic registration or basic application is cancelled, withdrawn, or otherwise ineffective.

Which countries are member of the Madrid Protocol?

The following countries are members of the Madrid Protocol:
Albania Bahrain China
Estonia
Antigua and Barbuda Belarus Croatia
European Union
Armenia Benelux Cuba
Finland
Australia Bhutan Cyprus
France
Austria Botswana Bosnia and Herzegovina
Czech Republic Georgia Egypt
Ghana Azerbaijan Bulgaria
Denmark Germany Greece
Hungary Iceland Iran
Ireland
Italy Japan
Kenya Kyrgyzstan Latvia
Lesotho Liechtenstein Lithuania
Madagascar Monaco Mongolia
Montenegro
Oman South Korea San Marino
Sao Tome and Principe
Sudan Tajikistan Morocco
Mozambique Namibia North Korea
Norway Poland Portugal Macedonia
Moldova Romania Russian Federation
Serbia Sierra Leone
Singapore Slovak Republic Slovenia
South Korea Spain Swaziland Sweden
Switzerland Syria
Turkey Turkmenistan Ukraine
UK USA Uzbekistan
Vietnam Zambia ISRAEL (as of 1st Sep 2010)

For further information on the Madrid Protocol please contact us
There are a number of other advantages and disadvantages of choosing the Madrid Protocol over to the regular system of filing separate national applications. Under some circumstances, it may be strategically preferable for an Israeli company to file directly in some countries rather than filing an International Trademark application under the Madrid Protocol.

Please contact Mr. Yoel Sztybel, Head of our Trademark
Department (yoel@ipatent.co.il), 073-7919199 and we will surely assist you in making the best
decisions regarding your trademark filing strategy.

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