Trademarks

How to find the status of Madrid Protocol designations

Status of Madrid Protocol designations

The Madrid Monitor provides a wealth of information about WIPO International registrations and their national designations, but there is one critical omission. All other online national trademark databases have a dedicated field for the status (pending, registered, or dead) of each trademark but the status of Madrid Protocol designations is missing from the Madrid Monitor. The closest they come is the “Real Time Status” tab but you still have to hunt around for the last Gazette entry for each designation and review the available documents, if any., to find out whether each designation registered or not.

If you download the details of a WIPO record from the Madrid Monitor using TMCloud the status of each Madrid Protocol designation will be calculated where possible and entered into the docket section of each trademark record. The Gazette entries for each record are shown and can be refreshed whenever necessary.

How to find the Status of Designations

Take IR 1274024 filed in 2015 with 45 designations as an example.

You could look for the status of the designations on the main page of the Madrid Monitor record, or use one of the tabs for additional data.

Transaction History section

There as a Transaction History section on the main page, but it can be misleading.

The “Statement of Grant” tab shows some but not all designations which have been granted/registered. Of the 45 designations, 21 have been marked as granted, but 44 are registered.

There is also a “Refusal” tab, but the information there is not usually up to date. Twelve designations have been marked as refused, but all save one are in fact registered. The tab shows provisional refusals and does not take into account subsequent grants.

Designations registered by default

Each designated office has a time limit for the initial examination of Madrid Protocol  designations, 12 months, 18 months or 18 months plus the time taken for oppositions to be filed.  If the International Bureau is not notified by a national trademark office of any objections within this time period the application is presumed to have been accepted.

Some Madrid Monitor records show a list of countries which have not responded within the time limit but this listing does not always appear.

Real Time Status tab

The quickest way to find the status of each designation is to review the list of Gazette entries provided under the “Real Time Status” tab. The listing is shown by the date of the Gazette entry, and there may be several entries for a particular jurisdiction scattered throughout the list.

The same data is available from the “By Office” tab or the “Documents” tab.

The result for application 1274024 is that all the designations except one have been accepted as registered, specifically or by default. The only exception is MG Madagascar which has a provisional refusal, but no further update.

Local National searches

Another approach is to do a local national search for the mark in the online national trademark databases (TMVIEW, TrademarkNow or the individual offices). Keep in mind that new application and registration numbers are issued for the designation records in at least 9 jurisdictions, United States, Australia, India, South Korea, China, Mexico, Norway, Switzerland and Turkey.  In addition, not all national databases include IR designations.

Our practical solution is to use the TMCloud software to download the record from the Madrid Monitor. TM Cloud scans the existing Journal entries and wherever possible figures out the status of the Madrid Protocol designations and applies the result to each record.