The international treaty that allows international registration, the Madrid Protocol, continues to become more and more user friendly. Back in August of 2018, I wrote about Canada’s upcoming accession to the Madrid Protocol, which will make securing a Canadian trademark more cost-effective and streamlined. On February 1st, the ability to divide and merge international registrations went into force. This may not sound all that exciting, but it is.
Previously, applicants who used the Madrid Protocol could run into issues when attempting to secure brand protection for numerous classes of goods, services, or a combination of both. If registration was refused based on one of the classes, the application as a whole would be refused registration. Refusals of this type are not uncommon in some very large marketplaces, including Japan, China, Australia, South Korea, and New Zealand.
Under the new regulations, an application can be divided if some of the classes are accepted and some are refused. In this way, registration can be secured for those acceptable classes and the refused classes can be addressed separately.
Merger is also available under two circumstances: (1) the application was subject to a division; or, (2) the application was separated due to a partial change in ownership. In the first scenario, merger can be requested to combine a divisional international registration with the international registration that it originated from. This can occur even if the original international registration was divided into more than two applications that each register after division.
The second scenario is a little bit more complicated. Partial ownership can come about when the ownership of a brand changes for only some classes or ownership in only some of the participating countries of the Madrid Protocol. If an application is split under either of these conditions and is later owned by the same entity, merger is available.
Division and merger may not be available in all countries taking part in the Madrid Protocol. Regardless, these new rules suggest you should reevaluate your global brand protection. If you haven’t considered filing internationally, you should. Make sure to find some time to discuss your brand strategy with a trusted trademark attorney who is up to speed with international trademark protection.