07 Jan The Madrid Protocol
The Madrid Protocol is part of the Madrid System for the International Registration of Marks (Madrid System), a central registration system for the international registration of trademarks and service marks administered by the World Intellectual Property Organization (WIPO). The Madrid Agreement Concerning the International Registration of Marks of 1891 (Madrid Agreement) and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of 1989 (Madrid Protocol) are the two international treaties that make up the Madrid System. In response to matters which were discouraging countries from acceding to the Madrid Agreement, the Madrid Protocol was adopted in 1989 and came into force in 1996. Under Madrid Protocol, marks can be registered and protected in multiple Madrid Protocol member countries through the filing of one application, and at this time, 96 countries have acceded to the Protocol. Registering a mark through the Madrid Protocol is a straightforward process and very convenient for the applicant and can be much less expensive as there is no need to hire local agents outside the initial registration country. Appointment of an agent is only necessary when there is an office action.
When an applicant files for protection in multiple member countries under the Madrid Protocol, they only have to file one application at one office and pay a single set of fees in one currency. The International Bureau of the World Intellectual Property Organization oversees the Madrid System and is responsible for transmitting requests for mark protection, renewals, and management matters to all members. Mark management is also streamlined under the Protocol where a change of address or name of the holder or any change in ownership can be recorded through a single step with the WIPO International Bureau. Under the Madrid Protocol, an international registration is valid for 10 years and can be renewed directly with the WIPO.
Differences between the Madrid Protocol and Madrid Agreement
- Applications can now be filed in English, French, and Spanish, under the Madrid Agreement, only French was allowed.
- Under the Madrid Protocol, an International Registration application can be based on a pending national application. Previously, an applicant had to wait until the national registration was issued.
- For an application under the Madrid Protocol, a national trademark office can choose to have either a 12- or an 18-month period in which inform the WIPO of any objections to an International Registration. Previously, it was 12 months.
- National trademark offices can charge higher fees under the Madrid Protocol.
- Under the Madrid Protocol, if an International Registration or any of the national applications based on it are refused, withdrawn, or cancelled within five years of the date of the International Registration, the applications and the International Registration can be converted to national applications that keep the initial application date. This was not possible under the Madrid Agreement.
- Applicants can obtain, in effect, a community trademark for the European Union since the EU acceded to the Madrid Protocol, but not the Madrid Agreement.
Standard mark registration process under the Madrid Protocol
- The applicant files an application at the office of origin, the home country intellectual property (IP) office. This initial application or an already registered mark is known as the basic mark.
- The applicant files an international application with the office of origin which then certifies it and sends to the WIPO International Bureau.
- The WIPO conducts a formal examination of the international application. If approved, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks. The WIPO then sends the applicant an International Registration Certificate and notifies the IP offices in the countries indicated on in the application for mark protection. However, the mark is not considered protected until it has been examined and accepted by the national offices.
- Each national IP office conducts a substantive examination of the mark and must accept or refuse the mark within 12 or 18 months depending on their IP legislation and then notify the WIPO which records the decision in the International Register and then informs the applicant.
- When a national IP office accepts the mark, it issues a statement of grant of protection. If a national IP office refuses a mark, in whole or partially, it does not affect the decisions of any other national IP offices in the same international application. Refusals can be contested with the national IP offices in accordance the relevant IP legislation.
Benefits of the Madrid Protocol
Convenience – By using the centralized filing and management system, only one application in a single language has to be filed to obtain mark protection in multiple countries. Marks can then centrally managed and maintained through the system.
Economical – Instead of filing multiple national applications and having to hire national agents in each country, only one international application has to be filed. Applicants also are no longer responsible for translations.
Global Coverage – Mark protection is available in 112 territories of the 96 member countries, including the EU and the African Intellectual Property Organization (OAPI), which represent 80% of total world trade.