Background
The Madrid Protocol is an international agreement under the aegis of the World Intellectual Property Organisation (WIPO). This international system of trade mark registration gives a trade mark owner the option to apply to protect a trade mark in several countries by simply filing one application with a single Office (WIPO), in one language, with one set of fees.
SI No 346 of 2001 Trade Marks (Madrid Protocol) Regulations 2001 implements the Madrid Protocol into Ireland’s national legislation and sets out the procedures to be followed in connection with trade marks under the Madrid Protocol.
The Madrid Protocol governs international trade mark applications received in the Intellectual Property Office of Ireland and requires that an international application made under the Protocol must be based on a national trade mark application or registration (referred to as the basic application or registration).
Changes
On foot of an amendment to Rule 21(3)(d) of the Madrid Protocol, it is now possible to have a ‘partial replacement’ of a national trade mark registration with an international registration, namely for only some of the goods and services covered by the national trade mark registration to be listed in the international registration.
The amendment to rule 21(3)(d) of the Madrid Protocol necessitates an amendment to rule 21(1)(a) of SI No 346 of 2001 Trade Marks (Madrid Protocol) Regulations. Consequential amendments are also required to Form No 2M in the Schedule to the 2001 Regulations to allow an applicant to select a full or partial replacement of the goods/services to which the trade mark applies. The replacement Form No 2M has also been amended to reflect the new name of the ‘Controller of Intellectual Property’ and the change of name of the office to the ‘Intellectual Property Office of Ireland’.
New SI amending SI No 346 of 2001
SI No 558 of 2024 Trade Marks (Madrid Protocol) (Amendment) Regulations 2024 provides for the necessary amendment to SI No 346 of 2001. This SI was signed into law by Minister Higgins on 15 October 2024 and it entered into force on that date.