CALL US NOW ON 01494 422626
We were recently asked to work on three Madrid designations by an Australian agent. This is a type of trademark filing that goes through a simplified process, allowing one application to cover multiple jurisdictions.
A ‘Madrid’ application is filed through the home Registry for the applicant, and allows the applicant to tick the appropriate boxes to indicate the countries they want to cover. The local Registries for those countries have 18 months to come back and issue a report with any concerns they have about the registration under their national law and procedures. If they do that, then a response has to be submitted - and a local attorney needs to be appointed to do so.
The Australian agent had submitted three applications, and both the UK and European offices had come back to them with the same objection. The agent asked us to deal with the objections for both the UK and Europe.
The objections all related to the claim to retail services that the applications included. The UK and EU have a slightly different approach to retail services to other trademark offices, which means that the definition used in the applications needs to be slightly different (and slightly more specific) compared to applications submitted in other jurisdictions.
We were able to make this process even simpler and more cost effective by handling both the UK and the EU applications at the same time.
We’re fortunate that Michael is able to act on European trademark applications as well as UK ones. He is also qualified as an Irish trade mark attorney (as well as a UK attorney) and works from time to time from an office in Dublin; that Irish qualification now entitles him to act before the EU office. Indeed, as he was practising in the UK in relation to trade marks in 1996 when the EUIPO first opened its doors, he was accepted as an EU trade mark attorney right from the start and has been practising there since then.
The agent’s clients benefitted from the two responses being handled by the same attorney because it meant that both could include the same information, interpreted in the same way by the same person – which made it efficient and cost effective as well as ensuring the applications were consistent in strategy and content.
All three applications have now been accepted in both the UK and the EU offices and are progressing forwards…
