An introduction to WIPO, including pros and cons

An introduction to WIPO, including pros and cons

• The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations, responsible for promoting and protecting intellectual property (IP) worldwide. It provides a range of services to help businesses and individuals protect their intellectual property rights across multiple jurisdictions.One of WIPO’s most important functions is managing the Madrid System for the international registration of trademarks. The Madrid Protocol and the Madrid Agreement collectively form this system, which allows trademark holders to register their marks in multiple countries through a single application.
  

  How the Madrid System Works

  With the Madrid System, businesses and individuals can file a single international trademark application in one language, pay one set of fees, and designate the countries where they seek trademark protection. The application is processed by WIPO, and once it’s approved, the trademark is protected in all the designated member countries.

  This system provides a streamlined process for managing and renewing trademarks internationally, making it easier for trademark owners to expand their protection without filing separately in each country.

  Pros of the WIPO Madrid System

  1. Cost-Effective:
     Filing through WIPO can be less expensive than filing separate national applications in each country, as it eliminates the need for multiple fees and administrative tasks.
  2. Simplified Process:
     You only need to submit one application, in one language, to cover multiple countries. This reduces the administrative burden compared to managing multiple filings across different jurisdictions.
  3. Global Reach:
     The Madrid Protocol includes over 100 countries, providing trademark protection in a wide array of markets across the globe. This can be a major advantage for businesses looking to expand internationally.
  4. Centralized Management:
     After registering through WIPO, managing renewals and amendments becomes much easier because they can be handled centrally. You don’t need to deal with individual country procedures for updates.
  5. Flexibility:
     You can add or remove countries from your registration as your business needs change. This can be done through a relatively straightforward procedure with WIPO.
  6. Consolidated Fees:
     Instead of paying separate fees for each country, WIPO allows you to pay a consolidated fee for multiple countries, simplifying budgeting and financial management.

  Cons of the WIPO Madrid System

  1. Territory Limitations:
     Not all countries are members of the Madrid Protocol, and some important markets are not included (e.g., Argentina, Chile, Hong Kong, Saudi Arabia, South Africa). For those countries, you’ll need to file separately, which could increase costs and complexity.
  2. No Broader Local Protection:
     The Madrid system requires you to choose from a predefined list of countries. You don’t have the flexibility to create broader, customized protection specific to certain local markets, as you would in national filings.
  3. Local Legal Issues and Costs:
     While the system is designed to simplify the process, you may still encounter issues at the local level (such as oppositions or objections) that require local legal representation. In such cases, you might need to hire a local lawyer, incurring additional costs.
  4. Longer Registration Process:
     The process for obtaining protection through WIPO typically takes longer than filing directly with national authorities. It can take up to 18 months for the international registration to be processed and granted.
  5. Risk of Non-Use Cancellation:
     If the base mark (the original trademark filed in your home country) is not used within a specified period, it may jeopardize your international registration. This is particularly a concern in jurisdictions like the United States, where non-use can lead to cancellation.
  6. Complicated for Sales or Transfers:
     If you wish to sell or license your trademark in certain countries, you might need to convert your WIPO registration into a national trademark first. This conversion process can be costly and complicated, especially in countries where local regulations are stringent.
  7. Late Notifications of Issues:
     In some countries, you may not be notified of issues (like oppositions) related to your WIPO application until it’s too late to respond effectively. Some countries, such as Brazil, may not notify you at all.