Through the Madrid Protocol any national from a signatory country can file a trademark application through the World IP Office designating one or various other signatory countries, obtaining the registration of their mark in several countries with just one application. This saves time and money for the applicant.
In Latin America, Brazil, Colombia, Cuba and Mexico are signatories of the Madrid Protocol. Brazil will start implementing the Protocol in October 2019, and it will be possible to designate this country through WIPO.
However, this poses some risks. Most times, the application is filed designating several countries without the recommended prior registrability and availability search reports, increasing the risks of provisional refusals from the national trademark offices.
When an applicant designates a country, a formal study of the mark is conducted, and sent to each of the national trademark offices designated, who also study the application. The national examination studies the intrinsic registrability of a mark, as well as the prior marks, in search for any absolute or relative grounds for rejection.
In case any are found, a provisional refusal is issued and served to the applicant through WIPO, and given a term to reply to it, including whichever argumentation, agreements and limitations the applicant may deem sufficient to overcome the objection.
Recent amendement to WIPO
Unfortunately, due to a recent amendment to WIPO regulations, any limitation or clarification to the applications must be made through WIPO, and not directly before the national Offices. As a result, the reply to the objection would require a higher expense, both in time and money.
In light of an amendment to the Mexican Trademarks Law, which came into effect last August 2018, coexistence agreements are now binding for the Examiners, as long as the trademarks are not identical. If the owners of the marks consider that there is no risk of confusion in case of coexistence, the IP Office is compelled to admit said coexistence.
Registering Trademarks through the Madrid Protocol
Despite the fact that registering trademarks through the Madrid Protocol is indeed a simpler procedure, the implications and possible consequences of this must be taken in consideration, and the necessary preventive measures (availability searches, possible negative connotations of words or designs, negotiations, agreements, limitations in scopes of protection) should be undertaken.
Lastly, it must be mentioned that, despite the simpler application procedure, Madrid Protocol designations tend to be longer procedures, as there is an international and a national stage, whereas national applications just have the latter.
All in all, designations of international registrations through Madrid Protocol are really useful, and they do simplify the registration procedure for applicants that want to protect their brands worldwide, but the national consequences must be taken in consideration. The professional advice of an IP expert in the region is always recommended in order to avoid conflict and dilations. Contact us to register a trademark without problems.
Source: www.inpi.gov.br/Read More
Since February 1, 2016, the Cuban Industrial Property Office (OCPI), in its capacity as a Receiving Office (RO) of international applications under the Patent Cooperation Treaty (PCT), has been accepting international patent applications filed electronically using the ePCT-Filing function in the ePCT Portal.
The ePCT-filing is a World Intellectual Property Office (WIPO) online service that allows secure electronic access to international applications filed through the PCT for receiving offices, international authorities and registered users.
Applicants using the ePCT for the filing of PCT international applications in OCPI as RO, will benefit from a reduction in the international filing fee charged by WIPO.
A notification containing the requirements and practices of OCPI regarding the filing of international applications in electronic form was published in the Official Notices (PCT Gazette) on January 28, 2016 at:
The Annual Report 2014, which reviews the main goals achieved during last year, has recently been released by the Cuban PTO (OCPI).
Regarding the Patent Division, the OCPI reports that 407 office actions were issued, 308 of which correspond to substantive examinations, a 14 percent increase over 2013. Additionally, 61 thematic patent searches were carried out and 443 final resolutions related to inventions, utility models and industrial designs were issued.
Concerning trademarks,during 2014 the OCPI examined 2112 files, a 13 percent decrease over last year. 91 percent of the examinations corresponds to trademarks and the rest to company names, commercial slogans, trading names and store names; 62 percent of the examined files corresponded to applications through the Madrid System.
OCPI also reports that 115 proposals were analyzed regarding feasibility studies for national and foreign investments, international collaboration projects for joint research, technology transfer contracts and other commercial agreements involving industrial property.This involved a 15 percent over the number of proposals assessed in 2013.
Additionally, the document contains information about the participation of OCPI in international IP events, as well as the activities carried out on IP training and dissemination.
The Cuban Industrial Property Office (CIPO) has invited the general public and specialists from different areas of the Government and other national entities to participate in an “Advanced Course on Databases for the use of information Industrial Property.”
The course will be held from September 21 to September 25, 2015. It will offer information about the peculiarities of the local patent document, and its value as a legal and commercial source of technical information. In addition, those who attend the workshop will develop skills regarding searching the Cuban patent free database.
The initiative will allow the Cuban Industrial Property Office to clarify to users and consumers the benefits of its online tools. In this way, it is clear that the enforcement and the defense of the IP rights are very important for the development of the country’s industries.
Source: http://www.ocpi.cuRead More
New Industrial Property Law covering Patents, introducing Utility Models, changing the definition of industrial models/designs and containing a lot of other surprises
Law No. 290/2012 has been enforced in Cuba on April 1, 2012.
What follows is a brief summary of the changes introduced by the new law:
- It is now possible to seek protection for utility models
- Patent applications will be published in order to enable third parties to file oppositions
- Patents can only refer to products and to processes
- The definition of what is considered an invention has been changed
- The subject matter excluded from patentability as well as what is considered a patentable microorganism have been defined in more detail
- Patents will have the duration of 20 years counted as from filing date. This is also valid for patents that were still in force in January 2005. In fact the Cuban Patent Office has already started issuing Patent Certificates containing the new duration for patents granted under the former law
- Inventors’ Certificates will be transformed into patents in those cases in which the subject matter allows it
The new law also contains a clear difference of what can be protected as industrial model and what as a design, as well as a detailed description of proceedings, which include publication in order to allow third parties to file oppositions, examination, and payment of annuities.Read More