The Madrid Protocol provides means for a simplified and streamlined procedure for filing trademark applications internationally. However, it is not a trademark harmonization treaty. After filing, the application is examined based on each country’s own laws and regulations, and it may be subject to domestic opposition proceedings. Israel recently began implementing the Protocol. Five Arab countries are signatories to the Protocol. In addition, three Arab countries are signatories to the Madrid Agreement. This article describes the implementation of the Protocol in these countries.
Recent Statistics on Implementation of the Madrid Protocol
Israel started implementing the Madrid Protocol as of September 1, 2010. According to Trademark Office statistics, in the first six months since the implementation of the Madrid Protocol, approximately 1,000 applications were filed by extending international trademark applications to Israel or designating Israel. In recent years, the number of trademark applications filed in Israel every year was approximately 8,000 to 10,000. Most applications (around 70 percent) are filed by foreign applicants. Accordingly, the Protocol already accounts for a substantial percentage of trademark filings by foreign applicants in Israel.
On the other hand, fewer than 100 “outgoing” international trademark applications have so far been filed by Israeli applicants. In view of the potential cost savings, the number of Israeli applicants using the Protocol to obtain international protection is likely to increase. However, as most trademarks owned and registered by Israeli businesses are of a local nature, it is the “incoming” aspect of the Protocol that is likely to be of the utmost importance from the Israeli perspective.
Revisions in Israeli Trademark Legislation
The implementation of the Protocol brought about some important legislative changes:
Substantive Examination in Israel Under the Protocol
- The legislation implementing the Madrid Protocol introduced a multiclass registration system enabling a single application to be filed in multiple classes, as well as the merger of previously filed single-class registrations into a single multiclass filing.
- The option to revise existing trademark registrations was discontinued; amendment of a trademark registration now requires the filing of a new application.
- The examination period of a trademark application was limited to a maximum of two years. Applications not accepted within this time period will be deemed to have been cancelled unless the applicant requests to present its arguments against the cancellation before the Registrar.
- The renewal period for a registration was set at 10 years (instead of an initial period of 10 years and subsequent 14-year periods).
Israel is a strict examining country. International trademark applications will be examined on absolute and relative grounds based on the principles developed by the Israeli courts and the Trademark Office with regard to inherent and acquired distinctiveness, confusing similarity to earlier-registered marks and other pertinent matters. Therefore, conducting clearance searches remains important also when filing under the Madrid Protocol. In some respects, in particular with regard to nontraditional trademarks, applicants may also find that the Israeli Trademark Office applies a strict, arguably overly strict, approach.
Interestingly, in the recent Trademark Office Guidelines (Circular MN/84), which came into force one month after Israel joined the Madrid Protocol, the Trademark Office discontinued its practice of requiring disclaimers of nondistinctive elements of a mark. As a result, more rejections are issued, and applicants are more often required to submit evidence substantiating that a mark has acquired distinctiveness through use and advertising.
After examination and acceptance, an Israeli trademark application is published in the Trademark Gazette for possible oppositions, which can be filed up to three months from the date of publication.
Because it has a strict examination regime and an opposition procedure, Israel’s accession to the Madrid Protocol was accompanied by a declaration under Article 5(2)(b) and (c) of the Protocol whereby the time limit of one year to notify a provisional refusal of protection has been increased to 18 months and a provisional refusal resulting from an opposition may be notified after the 18-month time limit.
Countries Participating in the Madrid System
Five Arab countries (out of 16) are signatories to the Madrid Protocol: Syria (as of August 5, 2004), Bahrain (as of December 15, 2005), Oman (as of October 16, 2007), Egypt (as of September 3, 2009) and Sudan (as of February 16, 2010). Two additional Arab countries, Algeria and Morocco, are signatories to the Madrid Agreement. Sudan and Egypt shifted to the Madrid Protocol after having been under the Madrid Agreement. Syria is a signatory to both.
Many of the influential Arab countries in terms of economy or branding, such as Saudi Arabia, Lebanon, United Arab Emirates and Jordan, have not yet joined the Madrid System.
Some Highlights of Implementation of the Madrid Protocol in Arab Countries
All the Arab countries that are signatories to the Madrid Protocol examine international trademark applications on absolute and relative grounds. The applications are published for possible oppositions in all these countries. In Bahrain, the opposition must be filed within 60 days from the date of publication in the National Gazette; in Egypt, within 60 days from the date of notification from the International Bureau (non-extendable); in Oman, within three months from the publication in the State Oman Gazette; and in Syria, within 90 days from the date of publication in the Property Protection Gazette.
Bahrain, Oman and Syria made the declarations under Article 5(2)(b) of the Protocol (extension to 18 months of the refusal period). Syria also made the declaration under Article 5(2)(c) of the Protocol (possible notification of refusals based on opposition after the 18-month time limit).
As early as 2004, the Jordanian government had reportedly resolved to embark upon the process toward full accession to and implementation of the Madrid Protocol. The decision is in line with the country’s obligations in its bilateral trade relations with the United States, the European Union and the European Free Trade Association. In 2007, Jordan amended its trademark laws to enable accession to the Madrid Protocol, but the Protocol has not yet been implemented.
Similar to the situation in Israel, the number of outgoing trademark applications by Arab applicants is likely to be negligible in comparison to the number of incoming international applications. For instance, in 2009, none of the top 50 Madrid applicants originated in Arab countries. On the other hand, Morocco and Egypt represented 1.7 percent and 1.6 percent, respectively, of all designations of international trademark registrations and were among the top 20 member states.
This low number of outgoing international trademark applications can be attributed to the fact that the current economies of Arab countries generally produce raw materials (e.g., oil, cotton, plastics) that do not provide a wealth of trademarking activity. (See Amir H. Khoury, Measuring the Immeasurable—The Effects of Trademark Régimes: A Case Study of Arab Countries
, 26 J.L. & Com. 11-70 (2006-07)). This may reflect on the willingness of additional Arab countries to join the Madrid Protocol in the foreseeable future.
The Madrid Protocol already accounts for a substantial percentage of the trademark filings in Israel. However, the strict examination of trademarks in Israel requires applicants opting for the Madrid filing route to consider specifically whether the trademark is eligible for registration in Israel. Only five Arab countries have joined the Protocol so far. In these countries, as in Israel, the number of incoming international applications is substantially greater than the number of outgoing applications.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers
are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association