The Madrid Protocol and International Trademarking - Updated for 2019

[@GrowingPains917]

I subscribed because of your excellent customer service! Thank you for producing awesome content and responding to comments 😀👍

[@trademarkfactory]

Thank you for a great question and awesome feedback :)

[@keattheamlim7806]

Thank you for this very useful video !

[@trademarkfactory]

Glad it was helpful!

[@evgenyromanov1418]

Brief and highly explanatory, exactly what I was looking for. Thank you for the quality content Sir.

[@trademarkfactory]

Glad it was helpful!

[@priyaaristotle1445]

Very helpful. Thank you for this informative and comprehensive video. God bless you.

[@trademarkfactory]

Thank you for your kind words. Glad it was helpful!

[@joeruelle6134]

This is very informative and answered all my questions. High protein, low fat, good job.

[@trademarkfactory]

Haha, thank you.

[@pankajkone123]

This is amazing. Thanks 🙏

[@trademarkfactory]

Thank you. Glad you found it useful!

[@SHOCKPROOFX]

Amazing! Very informative! Thank You very much!

[@trademarkfactory]

Glad it was helpful!

[@tubelight2135]

Brilliantly explained 🤩

[@trademarkfactory]

Thank you 🙂

[@knownuser]

Wow, thank you!

[@shinaystephen3665]

Soon as he said Guyana my spirits fell...

[@alex.s2043]

if a company X has a registered TM for instance in Canada and hasn't filed an international trademark and the convention priority time is over. a company Y files the same trademark for instance in EU and immediately filed an international application for it excluding Canada. Who has the priority in this case? Can company X still oppose or claim priority?

[@trademarkfactory]

This is a GREAT question! Once Company X's priority window closes, it's gone forever. Company Y can claim their own priority and it will be honored everywhere outside of Canada. The only remedy for Company X would be to either oppose the EU mark and hope that their centralized attack works or oppose all those other marks on a national level. Either way, a HUGE headache. The biggest problem there is that outside of the priority window, a previously filed Canadian trademark application is not sufficient grounds for a successful opposition in other jurisdictions. You need to show that your mark became so well known in those other jurisdictions that granting the trademark to someone else would be patently unfair, which is a very difficult hurdle to overcome. Like I said, a HUGE headache.

[@Bushchannel]

I didn’t notice North Korea on the “not included” list of countries. Is North Korea a member country ?

[@trademarkfactory]

Crazy as it is, yes, they are. ;)

[@sajjadpatwary]

What is number of class?

[@ThreeLions82]

I have a question about the Madrid Protocol. If I register my trademark in another country than my own, can I still apply for the Madrid Protocol trademarks?

[@trademarkfactory]

Having a trademark in another country will neither hurt nor help your ability to file under Madrid Protocol. You DO need to have a trademark in your home country to initiate it though. In other words, if you are from Canada, you can have direct trademarks in the U.S., Sweden, or Zanzibar-but unless you have filed your application in Canada, you will not be able to file your Madrid Protocol application.

[@ThreeLions82]

@@trademarkfactory Okay thank you mate I appreciate it. Im fascinated by the prospect of building my name overseas.

[@GrowingPains917]

If it’s risky to use the Madrid protocol in the EU or in any other country that has a lot of competition for your intended trademark, would it be possible to file your basic application in a small country that has less competition to reduce the likelihood that a third-party will attempt a “central attack“? It seems like this would work, but I don’t know if I would need to operate my business in that foreign country or have a mailing address there. Do you think I can use my basic USA address when filing a basic application in a foreign country? It looks like you addressed the subject here: 8:00 but it doesn’t sound very encouraging.

[@trademarkfactory]

Your Madrid application can only be based on a trademark filed in your "home country", which means a country in which you have a "real and effective commercial establishment." Messing with that could give bad people the easiest way to successfully carry out the "central attack."

[@GrowingPains917]

@@trademarkfactory that makes sense. It seems like using the Madrid protocol is super risky. By using it people are gambling thousands upon thousands of dollars with the hope that their basic application holds strong for five years. A lot can happen in five years. What kind of assurances do we have that this is a good route to go? Perhaps it’s better to file in each country individually? Thanks for responding

[@GrowingPains917]

I just subscribed due to your excellent customer service

[@trademarkfactory]

@@GrowingPains917 The best practice is to file direct marks in individual jurisdictions that are really important to you and use Madrid for less important ones. This way, you are more in control for the stuff that matters and you get to save on second-tier jurisdictions.

[@GrowingPains917]

@@trademarkfactory that makes total sense! Thank you so much for sharing your knowledge.

[@GrowingPains917]

Does your company provide businesses with intellectual property insurance? It seems like having international trademarks is bound lead to some disputes that need to be dealt with.

[@trademarkfactory]

No, we are not an insurance company.

[@ashishkmandal3756]

thanks..

[@theabhishekmondal]

You are telling class 3 ....What is Class means here?

[@trademarkfactory]

Watch this: kzbin.info/www/bejne/kKuxdGSebpytpMU

[@leinalee675]

tongue twister style but I like it

[@trademarkfactory]

Haha, thank you :)

[@NadiaNadia-iw8ic]

Could you confirm, is Canada and the US part of Madrid Protocol? Thank you.

[@trademarkfactory]

Yes. both Canada and the US are part of the Madrid system.

[@sriutamisussan3503]

Thank you. KZbin Sri Utami IP Consultant.