Madrid Protocol

The Madrid system for the international registration of marks, also conveniently known as the Madrid System, is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world.

The Madrid system provides a centrally administered system of obtaining a bundle of trademark registrations in separate jurisdictions. Registration through the Madrid system does not create an 'international' registration, as in the case of the European CTM system, rather it creates a bundle of national rights, able to be administered centrally, provided that the target jurisdiction is a party to the system.⁽¹⁾

The Madrid system is administered by the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland.

Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office

Members

As of 8 December 2010, there will be 85 members^[1] comprising the Madrid Union of jurisdictions which have become party to the Agreement or the Protocol or both.

The primary reason why the Protocol — which has been in operation since 2004 and has 78 members — is more popular than the Agreement — which has been in operation for more than 110 years and has 56 members^[2] — is that the Protocol introduced a number of changes to the Madrid system which significantly enhanced its usefulness to trademark owners.

Protocol versus Agreement:

Under the Protocol it is possible to obtain an international registration based on a pending trade mark application, so that a trade mark owner can effectively apply for international registration concurrently with or immediately after filing an application in a member jurisdiction. By comparison, the Agreement requires that the trade mark owner already holds an existing registration in a member jurisdiction, which may often take many months and sometimes years to obtain in the first place. In addition, the Agreement does not provide the option to ‘convert’ international registrations which have been ‘centrally attacked’

[edit]Advantages

The Madrid system provides a mechanism whereby a trademark owner who has an existing trademark application or registration (known as the 'basic application' or 'basic registration') in a member jurisdiction may obtain an ‘international registration’ for their trademark from the WIPO. The trademark owner may then extend the protection afforded to the international registration to one or more member jurisdictions, a process known as ‘designation’. A useful feature of the Madrid system is that this protection may generally be extended to additional jurisdictions at any time, such that international trade mark protection can be extended to new jurisdictions which subsequently join Madrid, or to such other jurisdictions as the trade mark owner may choose. In basic terms, the primary advantage of the Madrid system is that it allows a trademark owner to obtain trademark protection in any or all member states by filing one application in one jurisdiction with one set of fees, and make any changes (e.g. changes of name or address) and renew registration across all applicable jurisdictions through a single administrative process.

Filing these International applications can be accomplished without the appointment of a local agent in the designated countries. Thus, proceeding through the Protocol is much less expensive than filing nationally. These International rights are sought through the applicants’ home office using either the English or French language. A single filing fee is payable in the applicant’s home currency

[edit]Disadvantages

One disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of the basic application or basic registration within five years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent. For example, if a basic application covers 'clothing, headgear and footwear', and 'headgear' is then deleted from the basic application (for whatever reason), 'headgear' will also be deleted from the international application. Therefore, the protection afforded by the international registration in each designated member jurisdiction will only extend to 'clothing and footwear'. If the basic application is rejected as a whole, the international registration would also be totally refused.

The process of attacking the basic application or basic registration for this purpose is generally known as ‘central attack’.

Under the Madrid Protocol, the effects of a successful central attack can be mitigated by transforming the international registration into a series of applications in each jurisdiction designated by the international registration, a process known as ‘transformation’. Although transformation is an expensive option of last resort, the resulting applications will receive the registration date of the international registration as their filing date.

In 1997, less than half of a percent of international registrations were canceled as a result of central attack^[3].

The costs savings which usually result from using the Madrid system may be negated by the requirement to use local agents in the applicable jurisdiction if any problems arise.