To Madrid or not Madrid #2: What about the Goods and Services?

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Goods and services specifications are key when you’re deciding if Madrid is the right option for your client’s trademark filing.  As we mentioned in our last post, filing through Madrid should not be an automatic decision, and the specific mark is an important consideration.

In addition to the mark itself, the specification of goods and/or services is important in making this decision. There’s no one-size-fits-all with Madrid.

Home country scope really does matter – but assumptions are risky!

You know the rights you get via Madrid are defined by what you can get in your home market. And where you have a limitation on the rights in that home market, this then goes out to the entire world. So it really matters.

At Sortify we make the following assumptions about home countries:

• Madrid is usually good for home countries in Australasia, Europe and Singapore, as they allow broad specifications.
• Madrid is usually bad for the home countries of US and Canada as they don't permit broad specifications.

As a profession, we’ve made lots of assumptions about which countries allow broad and which allow narrow. As you will see below making these assumptions is risky and you need to take a nuanced approach.

If you only take one thing away from this blog it’s this: it’s essential to know which countries allow broad specifications and which only allow narrow. Unsurprisingly this varies from country to country, but what is surprising is that it can vary within a country. Do your due diligence about the specific home country,  and the specific goods or services the specific class and also the markets of interest.

Everyone thinks that the US and Canada are narrow, but in fact they allow broad goods and services descriptions in some classes. Here are some examples that illustrate the importance of thinking the consequences of home market rights.

Class 25 – I have nothing to wear

In the US and Canada, clothing in Class 25 is an example where only a narrow specification is allowed. In contrast, in New Zealand, Australia and Europe, you can file an application in Class 25 for “clothing, footwear, headgear”, and get very broad coverage.

In these broad scope countries, this is awesome for two reasons:

1. not only do you get a registration for a broad range of goods, but also;
2. if you have an “evidence of use” issue, you're only required to demonstrate use on “clothing”. This is much simpler than having to list individual items and showing use on all of those.

Tip: Madrid is generally a good option for these broad scope countries!

In contrast, if you’re a US applicant ultimately looking to get protection in the European market and elsewhere for “clothing” in class 25, Madrid is actually quite a risky option because you're going to have to do one of two things:

1. limit the protection you get, or;
2. try and draft a specification of goods for your home market that covers absolutely everything.

In the US in particular, where broad terms such as “clothing” are not permitted and where you still have to provide a declaration of use for your home market, you're not going to be able to get protection for a broad range of class 25 goods in the EU (via Madrid) because your declaration of use can't cover the goods you're not using your mark for in the US!

For applicants in classes like class 25, think really carefully about whether Madrid is the right path, because you’re definitely not getting the scope of coverage for goods and services that you could get internationally, and that obviously brings risk for your clients.

Class 14  - bringing the bling 

Let’s contrast this with Class 14. Both CIPO (the Canadian office) and the USPTO allow extremely broad descriptions of goods in Class 14. These are actual IP manual goods: “jewellery, watches, bracelets, earrings, clocks, precious stones”. They're as broad as you're going to get in pretty much any country of the world.

That means that if you have a jewellery client in the US, Madrid is a fantastic option for you in terms of goods or services. You can expect that you're going to get a nice broad specification of goods through in your home market. So when you file internationally, you can use the same specifications of goods and expect that they're going to go through in pretty much every other country as well.

Class 9 – avoiding a Kiwi fish-hook

Even countries we classify as “broad” often have material exceptions. New Zealand, Australia and the EU are examples of what are generally thought of as broad scope countries.

For example, like Australia and Europe, New Zealand used to allow really broad specs for “software”. This changed about three years ago when New Zealand adopted a very similar approach to both US and Canada in that you have to be very specific with your software-related goods.

New Zealand has a strong bias to using Madrid for export-based companies, so often New Zealand clients’ home registrations are limited to the specifics of the software. Then they file overseas via Madrid. What you will find is that if you filed in Singapore, Australia or Europe directly, you could have applied for “software, computer software, application software” as agreed terms. In Australia, you could even have got “computer software”. But where you file via Madrid, you will end up with an often incredibly narrow registration, being  “computer software for use in the field of X”, which really does limit the scope of your protection.

This shows that the assumption that Madrid is always right for an applicant coming from a “broad specification country” is not always correct. For New Zealand readers, the two classes that seem to catch people are class 35 for ‘retail services’ and class 9 for ‘computer hardware and computer software’.

In summary, it’s really important to have done your due diligence on the client’s home country and prospective market - know what’s allowed and what’s not. It’s not the same for each country and for each class so make an assessment (not an assumption) in each specific case.

Tip: Don’t assume broad countries are broad; don’t assume narrow countries are narrow!

Some other Goods and Services tips

When going from a broad specification country to a narrow specification country via Madrid

Say you have a nice “retail services” specification in Australia, and then you file via Madrid knowing that when you go into the States and Canada, the registry will raise an objection to ”retail services”.

What can you do? There are two possible approaches:

1. when you file your Madrid application, you can choose to adjust or amend your specifications for each individual designation. Do this for these narrower countries;  OR
2. file your Madrid covering not only the broad goods and services, but also list the specific. That way, the specific should go through in the narrower scope countries with minimal amendments required.

We hope that after reading this (and our last blog on Madrid), you’ll think carefully when deciding if Madrid is the right way forward for your client. We’ll cover other considerations in upcoming posts.

We also have an ongoing webinar series, where we address these topics and offer helpful tips as attorneys who’ve been there.

Watch this recorded webinar – ‘Avoid or Embrace? Tips for getting the most out of the Madrid Protocol‘ for more on this topic.

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