Madrid – The International Trademark System

The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. File a single application and pay one set of fees to apply for protection in up to 122 countries. Modify, renew or expand your global trademark portfolio through one centralized system.

Who can use the Madrid System?

You can use the Madrid System if you have a personal or business connection to one of the System’s members. This means you must either: be domiciled, have an industrial or commercial establishment in, or be a citizen of one of the 122 countries covered by the Madrid System's 106 members. Find out what users say about the Madrid System.

How much does it cost?

The cost of an international trademark registration includes the basic fee (653 Swiss francs; or 903 Swiss francs for a mark in color*), plus additional costs depending on where you want to protect your mark, and how many classes of goods and services will be covered by your registration.

For example, to register a trademark on February 16, 2018, with no color elements in India and the European Union, for one class of goods, the total cost will be 1'698 Swiss francs [653 basic fee + 148 (one class in India) + 897 (one class in the European Union)].

After obtaining an international trademark registration, additional fees apply to expand the geographical scope of coverage, modify or renew your trademark portfolio.

Learn more about fees | Estimate your fees

* If you file your application in the IP Office of a Least Developed Country (LDC), your basic fee will be reduced by 90% (to 65 or 90 Swiss francs).

Madrid Agreement Concerning the International Registration of Marks

The Madrid System for the International Registration of Marks is governed by the Madrid Agreement, concluded in 1891, and the Protocol relating to that Agreement, concluded in 1989. The system makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated Contracting Parties.

Summary of the Madrid Agreement Concerning the International Registration of Marks (1891) and the Protocol Relating to that Agreement (1989)

Introduction

The Madrid System for the International Registration of Marks is governed by two treaties:

the Madrid Agreement, concluded in 1891 and revised at Brussels (1900), Washington (1911), The Hague (1925), London (1934), Nice (1957) and Stockholm (1967), and amended in 1979, and
the Protocol relating to that Agreement, concluded in 1989, which aims to make the Madrid system more flexible and more compatible with the domestic legislation of certain countries or intergovernmental organizations that had not been able to accede to the Agreement.

States and organizations party to the Madrid system are collectively referred to as Contracting Parties.

The system makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated Contracting Parties.

Who May Use the System ?

An application for international registration (international application) may be filed only by a natural person or legal entity having a connection – through establishment, domicile or nationality – with a Contracting Party to the Agreement or the Protocol.

A mark may be the subject of an international application only if it has already been registered with the trademark office of the Contracting Party with which the applicant has the necessary connections (referred to as the office of origin). However, where all the designations are effected under the Protocol (see below), the international application may be based simply on an application for registration filed with the office of origin. An international application must be presented to the International Bureau of WIPO through the intermediary of the office of origin.

The International Application

An application for international registration must designate one or more Contracting Parties in which protection is sought. Further designations can be effected subsequently. A Contracting Party may be designated only if it is party to the same treaty as the Contracting Party whose office is the office of origin. The latter cannot itself be designated in the international application.

The designation of a given Contracting Party is made either under the Agreement or the Protocol, depending on which treaty is common to the Contracting Parties concerned. If both Contracting Parties are party to the Agreement and the Protocol, the designation will be governed by the Protocol.

International applications can be filed in English, French or Spanish, irrespective of which treaty or treaties govern the application, unless the office of origin restricts that choice to one or two of these languages.

The filing of an international application is subject to the payment of a basic fee (which is reduced to 10 per cent of the prescribed amount for international applications filed by applicants whose country of origin is an LDC, in accordance with the list established by the United Nations), a supplementary fee for each class of goods and/or services beyond the first three classes, and a complementary fee for each Contracting Party designated. However, a Contracting Party to the Protocol may declare that, when it is designated under the Protocol, the complementary fee is replaced by an individual fee, whose amount is determined by the Contracting Party concerned but may not be higher than the amount that would be payable for the registration of a mark, at the national level, with its office.

International Registration

Once the International Bureau receives an international application, it carries out an examination for compliance with the requirements of the Agreement, the Protocol and their Common Regulations. This examination is restricted to formalities, including the classification and comprehensibility of the list of goods and/or services. If there are no irregularities in the application, the International Bureau records the mark in the International Register, publishes the international registration in the WIPO Gazette of International Marks (hereinafter referred to as "the Gazette"), and notifies it to each designated Contracting Party. Any matter of substance, such as whether the mark qualifies for protection or whether it is in conflict with a mark registered previously in a particular Contracting Party, is determined by that Contracting Party's trademark office under the applicable domestic legislation. The Gazette is available in electronic form (e-Gazette) on the Madrid system website.

Statement of Grant of Protection or Refusal of Protection

The office of each designated Contracting Party shall issue a statement of grant of protection under Rule 18ter of the Common Regulations.

However, when designated Contracting Parties examine the international registration for compliance with their domestic legislation, and if some substantive provisions are not complied with, they have the right to refuse protection in their territory. Any such refusal, including an indication of the grounds on which it is based, must be communicated to the International Bureau, normally within 12 months from the date of notification. However, a Contracting Party to the Protocol may declare that, when it is designated under the Protocol, this time limit is extended to 18 months. That Contracting Party may also declare that a refusal based on an opposition may be communicated to the International Bureau even after the 18-month time limit.

The refusal is communicated to the holder of the registration or the holder's representative before the International Bureau, recorded in the International Register and published in the Gazette. The procedure subsequent to a refusal (such as an appeal or a review) is carried out directly by the competent administration and/or court of the Contracting Party concerned and the holder, without the involvement of the International Bureau. The final decision concerning the refusal must, however, be communicated to the International Bureau, which records and publishes it.

Effects of an International Registration

The effects of an international registration in each designated Contracting Party are, from the date of the international registration, the same as if the mark had been deposited directly with the office of that Contracting Party. If no refusal is issued within the applicable time limit, or if a refusal originally notified by a Contracting Party is subsequently withdrawn, the protection of the mark is, from the date of the international registration, the same as if it had been registered by the office of that Contracting Party.

An international registration is effective for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees.

Protection may be limited with regard to some or all of the goods or services or may be renounced with regard to some only of the designated Contracting Parties. An international registration may be transferred in relation to all or some of the designated Contracting Parties and all or some of the goods or services indicated.

Advantages of the Madrid System

The Madrid system offers several advantages for trademark owners. Instead of filing a separate national application in each country of interest, in several different languages, in accordance with different national or regional procedural rules and regulations and paying several different (and often higher) fees, an international registration may be obtained by simply filing one application with the International Bureau (through the office of the home country), in one language (English, French or Spanish) and paying one set of fees.

Similar advantages exist for maintaining and renewing a registration. Likewise, if the international registration is assigned to a third party, or is otherwise changed, such as a change in name and/or address, this may be recorded with effect for all designated Contracting Parties by means of a single procedural step.

To facilitate the work of the users of the Madrid system, the International Bureau publishes a Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol.

The Madrid Agreement and Protocol are open to any State party to the Paris Convention for the Protection of Industrial Property (1883). The two treaties are parallel and independent, and States may adhere to either or both of them. In addition, an intergovernmental organization that maintains its own office for the registration of marks may become party to the Protocol. Instruments of ratification or accession must be deposited with the Director General of WIPO.

The Madrid system (officially the Madrid system for the international registration of marks) is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. Its legal basis is the multilateral treaty Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the Madrid Agreement (1989).

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 a unified registration, as in the case of the European Union trade mark^[1] system; rather, it creates a bundle of national rights through an international registration able to be administered centrally. Madrid provides a mechanism for obtaining trademark protection in many countries around the world which is more effective than seeking protection separately in each individual country or jurisdiction of interest.

The Madrid Protocol system provides for the international registration of trade marks by way of one application that can cover more than one country. The opportunity of having a single registration to cover a wide range of countries gives advantages, both in terms of portfolio management and cost savings, as opposed to a portfolio of independent national registrations.

Madrid now permits the filing, registration and maintenance of trade mark rights in more than one jurisdiction, provided that the target jurisdiction is a party to the system. The Madrid system is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. There are 90 countries part of the Madrid System.

History and development[edit]

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Find sources: "Madrid system" – news · newspapers · books · scholar · JSTOR (December 2016)

The Madrid system comprises two treaties; the Madrid Agreement Concerning the International Registration of Marks,^{[fn 1]} which was concluded in 1891, and entered into force in 1892, and the Protocol Relating to the Madrid Agreement, which came into operation on 1 April 1996. The Madrid Agreement and Madrid Protocol were adopted at diplomatic conferences held in Madrid, Spain.

The Madrid Agreement was originally intended to provide for an international registration system, but did not achieve this for two significant reasons:

The lack of international acceptance. Many non-member countries, including the United Kingdom, the United States, and Central American, South American and Asian countries, such as Japan, were not adherents, which undermined recognition of the system as a truly "international" regime. Significantly, many of these countries represent the largest numbers of trademark filings and registrations in the world; and
The mere forwarding by the International Bureau of a uniform application to member countries, rather than the registration of the applicable trademark in the national trademark registers, precludes an actual "registration" system.

Some of the large trading nations like the United States, Japan, and Canada, which have a large number of filings at the national level, did not join the Madrid Agreement due to another perceived flaw in the system: if the home registration upon which an international registration was based came under 'central attack', the international registration would be cancelled or limited to the same extent that the home registration was cancelled or limited.

During 1966 and 1967, attempts were made to address this issue by establishing a new treaty that would reflect the need of the times rather than the world of the 1890s when the agreement was adopted. This led to the drafting of the Trademark Registration Treaty (TRT) which was adopted in Vienna in 1973, and entered into effect in 1980, with five contracting states, namely, Burkina Faso, Congo, Gabon, Soviet Union and Togo. In the absence of more accessions to the TRT and the low number of registrations since its inception, it was clear that the TRT was unlikely to supplant the Madrid Agreement.

As the realization of the introduction of a multi-jurisdictional (or at least pan-European) European Community Trade Mark (CTM) approached, the relevancy of the Madrid system came under scrutiny. Pressure increased on WIPO to maintain its relevance and strengthen the agreement by increasing membership, possibly through amendments. This culminated in the introduction of the Madrid Protocol, pursuant to which a CTM registration could be a 'foundation' or 'home' registration upon which an international registration could then be established. This mechanism is referred to as a "linking provision." The Protocol, after considerable lobbying efforts by WIPO, was signed by many countries, including most of the present members of the Madrid Agreement, and some countries that are members of the European Union, but were not members of the Madrid Agreement. The Protocol entered into force on December 1, 1995 and became operative on April 1, 1996.

Many countries have needed to modify or consider modifying their trademark laws in order to adhere to the Protocol, in addition to the modifications required by GATT-TRIPS/WTO.

In Europe, resistance to the Protocol was brought by trademark attorneys who were afraid of losing business because a Community Trade Mark application could be filed directly through the Madrid Protocol process.^[2]

In the United States, the proposal bogged down due to a trademark dispute between two businesses who were heavy campaign contributors to certain Congressmen, followed by a repeated reshuffling of the Senate due to elections and a subsequent defection of a Republican senator.^[2] The treaty was eventually ratified during the Presidency of George W. Bush.^[3]

Japan revised its trademark law with the official acceptance of the Nice Classification (an international trademark classification system for products and services), as well as applications covering service using service marks. The members of the European Community have amended their laws to conform to the European Community Harmonization Directive. In recent years trademark laws in several other countries such as Malaysia, New Zealand and South Africa have also been amended to accommodate the changes.^{[citation needed]}

Members[edit]

Madrid Union members

Adherence to the convention or the protocol includes membership of the "Madrid Union." As of June 2019 there are 104 members made out of 120 countries. The original treaty has 55 members, all of which are also party to the protocol (when Algeria joined the Madrid Protocol on October 31, 2015, all of the members of the Madrid Agreement were also members of the Madrid Protocol and many of the aspects of the Madrid Agreement ceased to have practical effect). The term 'Madrid Union' can be used to describe those jurisdictions party to either the Agreement or the Protocol (or both).^[4]

The primary reason the protocol—which has been in operation since 1996 and has 100 members^[5] — is more popular than the agreement — which has been in operation for more than 110 years and has 55 members^[4]—is that the protocol introduced a number of changes to the Madrid system which significantly enhanced its usefulness to trademark owners.

For example, 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, 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.'

Advantages[edit]

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.

Disadvantages[edit]

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 extend only 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.^[6]

The cost 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.

Developments since 2000[edit]

Two significant recent developments in international trademark law were the accession of the United States and the European Union to the Madrid Protocol on November 2, 2003, and October 1, 2004, respectively. With the addition of these jurisdictions to the protocol, most major trading jurisdictions have joined the Madrid system.

On 31 July 2015, Algeria deposited its instrument of accession and will accede to the Madrid Protocol on 31 October 2015. As Algeria was the last member of the Madrid system to adhere to the protocol, the protocol is now effective across the entire Madrid system.^[7]

Separately, the Parliament of Malaysia has passed the Trade Mark Bill 2019 and the Trade Descriptions (Amendment) Bill 2019 on 2 July 2019 and the Minister of Domestic Trade & Consumer Affairs had deposited its instrument of accession to the Madrid Protocol with the World Intellectual Property Organization (WIPO) on 27 September 2019.<http://www.myipo.gov.my/en/malaysia-accedes-to-madrid-protocol/> With the implementation of the Madrid Protocol system on 27 December 2019, brand owners who are keen to seek trade mark protection overseas can now file a single application with WIPO and designate the member countries of interest with lower fees and less formality to adhere.

Madrid Protocol

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks -- the Madrid Protocol -- is one of two treaties comprising the Madrid System for international registration of trademarks. The protocol is a filing treaty and not a substantive harmonization treaty. It provides a cost-effective and efficient way for trademark holders -- individuals and businesses -- to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. Moreover, no local agent is needed to file the application. While an International Registration may be issued, it remains the right of each country or contracting party designated for protection to determine whether or not protection for a mark may be granted. Once the trademark office in a designated country grants protection, the mark is protected in that country just as if that office had registered it. The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization's International Bureau. The International Bureau administers the Madrid System and coordinates the transmittal of requests for protection, renewals and other relevant documentation to all members.

Protocol on Environmental Protection to the Antarctic Treaty (The Madrid Protocol)

Blue iceberg at Kazak Island. (Photo: Kerry Steinberner)

The Protocol on Environmental Protection to the Antarctic Treaty (also known as the Madrid Protocol) provides for comprehensive protection of Antarctica, the last great wilderness on earth.
The Protocol was adopted in 1991, harmonising and expanding on a range of earlier provisions relating to protection of the Antarctic environment. The Parties to the Protocol commit to comprehensively protect the environment of the Antarctic region (the area south of 60 degrees South latitude) and dependent and associated ecosystems.
The Protocol:

designates Antarctica as a ‘natural reserve, devoted to peace and science’
establishes environmental principles that must be a fundamental consideration in the planning and conduct of all activities
prohibits mining indefinitely
requires that all proposed activities must be subject to a prior assessment of their environmental impacts
establishes the Committee for Environmental Protection, to develop advice and formulate recommendations to the Antarctic Treaty Parties on implementation of the Protocol
requires the development of contingency plans to respond to environmental emergencies.

The Protocol is also accompanied by Annexes that detail specific measures and procedures relating to:
ANNEX I: Environmental Impact Assessment – outlines the procedures for prior environmental assessment of all proposed activities, including consideration of alternatives. At the highest level of impact (activities likely to have more than a minor or transitory impact on the environment) a Comprehensive Environment Evaluation must be prepared and opportunity provided for the Committee for Environmental Protection and Parties to comment on the proposal.
ANNEX II: Conservation of Antarctic Fauna and Flora – requires that a permit be issued for any proposal to ‘take’ or ‘harmfully interfere with’ Antarctic fauna and flora. This annex also includes a mechanism to declare Antarctic specially protected species (threatened species) and provisions to prevent the introduction of non-native species.
ANNEX III: Waste Disposal and Waste Management – requires the Parties to develop waste management plans. This annex also details requirements for managing wastes generated through present-day operations, including the removal of some wastes from the Antarctic Treaty area, and the clean-up of wastes remaining from past activities. Particularly harmful products such as Polychlorinated biphenyls (PCBs), polystyrene packaging beads and pesticides are prohibited in the Antarctic.
ANNEX IV: Prevention of Marine Pollution – regulates the discharge of substances from ships, including general prohibitions on the disposal at sea of oily mixtures, noxious liquid substances garbage and plastics.
ANNEX V: Area Protection and Management – provides that an additional level of protection can be afforded to special values, beyond the comprehensive environmental protection measures that apply throughout the Antarctic under the Protocol, through the designation of Antarctic Specially Protected Areas, Antarctic Specially Managed Areas and Historic Sites and Monuments.
ANNEX VI: Liability Arising from Environmental Emergencies – outlines arrangements to prevent and respond to environmental emergencies arising from scientific research programs, tourism and all other governmental and non-governmental activities. (This Annex has yet to enter into force.)
The text of the Protocol and Annexes can be downloaded from the website of the Secretariat of the Antarctic Treaty.

Mining prohibition

Article 7 of the Madrid Protocol unambiguously prohibits mining in Antarctica. It states that ‘[A]ny activity relating to mineral resources, other than scientific research, shall be prohibited.’
There is no time limit on the mining ban and there are strict rules for modifying the ban. The notion of a “50-year ban” on mining is a common misconception, and arises from the general review provisions of the Protocol.
Up until 2048, the unanimous agreement of all countries actively engaged in the management and governance of Antarctica – the Antarctic Treaty Consultative Parties – would be required to change the Protocol to remove the mining ban. After that time any Consultative Party may request that a conference be held to review the operation of the Protocol. Any change to the mining prohibition ban proposed at a review conference would only enter into force if:

adopted by a majority of all Consultative Parties (including three quarters of the Consultative Parties at the time of adoption of the Protocol in 1991), and
formally implemented by three quarters of Consultative Parties (including all 1991 Consultative Parties).

Further, any amendment removing the mining ban – either by the unanimous agreement of the Consultative Parties, or at a review conference – could only occur if a legal regime for controlling mining was in force and the sovereign interests of Parties under Article IV of the Antarctic Treaty were safeguarded. Unless an amendment is adopted in the manner set out above, the mining ban will remain in force indefinitely.
The Antarctic Treaty Parties regularly reiterate their commitment to the Antarctic mining ban. For example, at the Antarctic Treaty Consultative Meeting in 2016 the Parties celebrated the 25thanniversary of the signing of the Protocol and adopted a Declaration [PDF] reaffirming their ‘strong and unequivocal commitment’ to the mining ban, and a dedicated Resolution on ‘Confirming ongoing commitment to the prohibition on Antarctic mineral resource activities, other than for scientific research; support for the Antarctic Mining Ban’.

Environmental principles of the Madrid Protocol

The Protocol provides that protection of the Antarctic environment and dependent and associated ecosystems and the intrinsic value of Antarctica must be fundamental considerations in the planning and conduct of all human activities in Antarctica. With this aim, all such activities are to be planned and conducted so as to:

limit adverse impacts on the Antarctic environment; and
avoid
- adverse effects on climate or weather patterns
- significant adverse effects on air or water quality
- significant changes in the atmospheric, terrestrial (including aquatic), glacial or marine environments
- detrimental changes in the distribution, abundance or productivity of species or populations of species of fauna and flora
- further jeopardy to endangered or threatened species; or
- degradation of, or substantial risk to, areas of biological, scientific, historic, aesthetic or wilderness significance; and
accord priority to preserving the value of Antarctica for scientific research

The environmental principles in the Protocol also include requirements for:

prior assessment of the environmental impacts of all activities
regular and effective monitoring to assess predicted impacts and to detect unforeseen impacts

Background to the Madrid Protocol

The negotiation of the Protocol followed many years of international negotiations on controlling potential mineral resource activities in Antarctica. The underlying assumption of the Convention on the Regulation of Antarctic Mineral Resource Activities (the Antarctic Minerals Convention, or CRAMRA), adopted in June 1988 by a Special Antarctic Treaty Consultative Meeting in Wellington (New Zealand), was that it may be possible for mining to be consistent with the protection of the Antarctic environment. This assumption, however, became subject to increasing questioning.

The Australian – French proposal

On 22 May 1989 the then Australian Prime Minister, the Hon Bob Hawke, announced that Australia was opposed to mining in Antarctica and would not sign the Minerals Convention. Mr Hawke said the Government believed that it was both desirable and possible to seek stronger protection for Antarctica. Australia would therefore work within the framework of the Antarctic Treaty system to obtain consensus among Consultative Parties on the establishment of a comprehensive environment protection regime for Antarctica which prohibited mining.
The initiative became a joint one with the then Prime Minister of France, Mr Michel Rocard, in August 1989. The Prime Ministers said that they saw mining in Antarctica as incompatible with protection of the Antarctic environment, and that the specific role of the Antarctic in monitoring global changes, as well as the region’s fragility, called for a comprehensive regime to protect the Antarctic environment and associated ecosystems.
At the 15th Antarctic Treaty Consultative Meeting in Paris in October 1989, Parties to the Treaty agreed to hold a Special Consultative Meeting during 1990 to consider proposals for comprehensive protection of the Antarctic environment.

11th Special Consultative Meeting

The Protocol was negotiated in just under a year during four sessions of the 11th Antarctic Treaty Special Consultative Meeting. The first of these sessions was in Viña del Mar, Chile, in November and December 1990. Three further sessions were held in Madrid in April, June and October 1991. The Protocol was adopted on 4 October 1991 and was signed by all Antarctic Treaty Consultative Parties within the year it was open for signature.

Entry into force

The Madrid Protocol entered into force on 14 January 1998 following the deposit of instruments of ratification, acceptance, approval or accession by all the states which were Consultative Parties on 4 October 1991. During the intervening period each Party had particular domestic requirements to meet before the instruments could be deposited.
In Australia’s case, legislation had to be developed to provide a basis for legally enforcing the provisions of the Protocol and its annexes. The key Australian legislation to implement the Protocol received Royal Assent on 11 December 1992 and subsidiary regulations were completed in March 1994 allowing Australia to ratify the Protocol on 6 April 1994.
Annex V to the Protocol entered into force on 24 May 2002. Annex VI to the Protocol was finalised in June 2005, and will enter into force once it has been formally accepted by all states which were Consultative Parties at the time of its completion.

The Madrid Protocol is an international system for obtaining trade mark protection for a number of countries and/or regions using a single application. Protection (an “International Registration”) can only be obtained for countries and regions which have joined the system (member countries), and these are listed below.

International Registrations give a bundle of rights administered centrally via the World Intellectual Property Organisation (WIPO) in Switzerland.

Member Regions

In addition to many individual countries, there are three regions which can be designated in an International Registration under the Madrid Protocol.

One is Benelux: this comprises Belgium, The Netherlands and Luxembourg; they are in effect treated as one country – it is not possible to designate them separately.

Another is the European Union (EU): all member states of the European Union (with Benelux treated as one – see above), except for Malta (which is not currently in the International Registration System), can be designated separately, in addition or as an alternative.

The third is the African Intellectual Property Organization (OAPI); please see below for list of the member countries.

Note that it is not possible to designate the member countries of OAPI separately; nor is it possible to file stand alone national applications in the member countries as they have decided that trade mark protection will only be through the OAPI.

Who can apply?

Any UK company, or any UK national, may apply if they have a UK or European Union Trade Mark (EUTM)1application or registration. Others may be able to apply, if they have a connection with a member country/region and have a trade mark application or registration for that country or region.

Home Application/Registration

As a United Kingdom trade mark application is examined in general quite rapidly, it is probably worthwhile waiting for grant to occur before filing an International Madrid Protocol Application based on it, so that any problems arising during application will have been dealt with.

An existing UK or European Union Trade Mark registration can be used as the basis for an International Registration.

It is possible to base an International Registration on more than one UK application/registration or more than one EUTM application/registration for the same mark, but not a mixture of UK and EUTMs.

What are the advantages?

The cost will almost certainly be less than applying separately for registration for each member country/region. However, the costs depend on various factors, including the countries/regions designated, and we will be happy to provide an estimate after discussing your requirements.
We can handle the application procedure for all countries/regions unless objections arise (as mentioned below). This leads to a further cost saving as we do not generally need to instruct local attorneys.
Protection for some countries/regions may be obtained more quickly than by using the national route. This is because strict time limits are set under the Protocol.
Recordal of changes of name and assignments etc. (and, for some countries/regions, licenses) is carried out centrally via WIPO. There is thus a cost saving compared with having to record such events separately in each member country/region.
An International Registration can replace a corresponding national/regional registration without loss of rights.
It is usually possible to add extra countries/regions later though these will have their own, later, date.

What can be applied for?

Almost any mark that would be acceptable in the member countries can be applied for. The International Application can include as many classes of goods/services as the home application or registration. It cannot include items that are outside the scope of the goods/services of the home application or registration. Within these parameters, it is possible to have different specifications of goods/services for different designations. For example, the United States will normally require a specification which is more specific than the generally worded specifications which are acceptable for most countries/regions.

How do I apply?

We can of course handle the application procedure for you.

In brief, the application (“International Application”) has to be filed at the Trade Mark Office of the applicant’s home country/region (“The Office of Origin”), corresponding to the “home” application or registration upon which the International Application is based.

The Office of Origin checks the details of the applicant’s home application or registration and forwards the application to the World Intellectual Property Organisation.

The application can be filed in either English, French or Spanish and can designate any number of the member countries/regions (except the applicant’s home country/region, as this is covered by the applicant’s home application or registration on which the application for International Registration is based).

Examination by WIPO

Only a formalities examination is carried out by WIPO. If there are no issues, an International Registration will be registered and details sent to each of the offices of the designated member countries/regions listed in the International Application. Note that registration of the International Registration by the International Bureau does not in itself give protection in the designated countries/regions.

Examination by designated member countries/regions

The offices for the designated member countries/regions each examine the International Registration. They can refuse to accept the registration for their country (or region) in whole or in part on a number of grounds such as:

it would conflict with existing rights (in some countries/regions refusal on this ground occurs only if a third party successfully objects);
it is not distinctive;
it is contrary to morality or public order;
it is likely to cause deception.

There can also be queries regarding the list of products/services.

The designated member countries/regions have a period of either 12 or 18 months from being informed of the designation by WIPO in which to notify refusal to the International Bureau or else to issue a statement of grant of protection. The 18 month period may be extended where an opposition is filed against the relevant designation.

If objections or oppositions arise and are to be responded to, then local trade mark attorneys in general have to be appointed if the objections are to be contested; where objections or oppositions arise to the designation of the European Union we, as European Trade Mark Attorneys, can handle these.

Enforceability in various countries

We are aware that some countries and regions (in particular OAPI, Eswatini (formally called Swaziland), Ghana, Liberia, Namibia, Sierra Leone, Zambia and Zimbabwe) have not yet enacted domestic legislation so as to explicitly provide protection for marks designated under the International Registration system. It is therefore doubtful that designations will be enforceable in these countries.

Also although designations of Egypt in International Registrations have been recognized there for many years, no provision is made for them in their domestic law, and so there is some slight doubt as to their enforceability.

Note also that the status of a European Union Trade Mark and consequently a European Union designation under Gibraltarian law is not absolutely clear; there are conflicting views on this point.

Assignments & Licensing

It is possible to assign an International Registration either partially or totally, including splitting it by designated countries/regions. The assignment can only be recorded if the new owner belongs to, or has a connection with, a member country/region. If this does not apply, the assignment cannot be recorded and the International Registration, or the part being assigned, remains in the name of the old owner.

Since April 2002 it has been possible to record licences centrally through WIPO in respect of some countries/regions. However some countries have issued declarations that applications to record licences must be made through the national/regional office concerned – these countries are indicated L in the list of countries at the end of this page.

The national laws of some countries do not provide for the recordal of licences and these countries have issued declarations that such recordals made at WIPO are without effect – these countries are indicated N, however it is not obligatory for such a declaration to be made.

What are the disadvantages of International Registrations?

If within five years from the date of the International Registration the applicant’s home application or registration ceases to have effect either in whole or in part, then the International Registration will be cancelled to the same extent.
If this situation arises, then it is possible to file national/regional applications having the same coverage, claiming a date back to that of the International Registration. The total costs will then be rather greater than had the national/regional applications been filed in the first place.
It may be some time before it can definitely be assumed that protection exists in a country/region, because some countries/regions still do not advise that they have accepted a designation and so it has to be assumed that it is protected if the relevant time for advising of refusal has expired and no refusal has been advised.

Madrid Agreement

The Madrid Protocol is, in effect, an updated version of a system called the Madrid Agreement, which started over a century ago. As from 31 October 2015 all the members of the Madrid Agreement are also members of the Madrid Protocol; as the Protocol takes precedence over the Agreement, the Protocol now governs all international applications and registrations. The Agreement is in effect redundant – no operations under the Agreement are now conducted.

Seeking Trade Mark Protection for the European Union

All the countries in the European Union (EU) except for Malta belong to the Madrid Protocol; leaving aside Malta this gives a choice of four routes of protection for the EU:

national applications;
a directly filed European Union Trade Mark application;
the designation of the European Union in an International Application;
the designation of the individual European Union countries in an International Application.

The European Union Intellectual Property Office2 treats the designation of the EU somewhat differently to applications submitted directly to them; please see our separate page for details.

A particular advantage of designating the EU (over a directly filed European Union Trade Mark) is that if the designation of the EU is withdrawn, refused or ceased to have effect (as opposed to the International Registration as a whole), that designation can be converted into subsequent designations of EU member states (except for Malta, and with Benelux counting as one) which should give substantial cost savings over the other option, conversion to national applications, which is the only option for directly filed European Union Trade Mark applications and registrations.

There are various other advantages and disadvantages to the various routes: please see our page Trade Marks: What Route to Protection? for further information.

The Future

As Brazil, Colombia and Mexico have joined the Madrid Protocol, and as applications can be filed in Spanish, it is hoped that further countries, especially those in Central and South America, almost all of which of which are Spanish-speaking, will sign up. Also it is expected that Malaysia will join soon.

1 previously known as a Community Trade Mark (CTM)
2 previously known as the Office for Harmonization in the Internal Market (OHIM)

Member countries and regions (at 2 October 2019)

The member countries of the Madrid Protocol are:

AfghanistanL	Lesotho
African Intellectual Property Organization (OAPI)1L	Liberia*
Albania	Liechtenstein
Algeria	LithuaniaE
Antigua & Barbuda	Madagascar
Armenia	MalawiL
AustraliaN	MexicoL
AustriaE	MoldovaL
Azerbaijan	Monaco
Bahrain	Mongolia
Belarus	Montenegro
Benelux2E	Morocco
Bhutan	Mozambique
Bonaire, Saint Eustatius and Saba3	Namibia*
Bosnia and Herzegovina	New Zealand9N
Botswana	North Korea
Brazil (from 2 October 2019)	North Macedonia10
Brunei Darussalam	Norway
BulgariaE	Oman
CambodiaL	Philippines11
CanadaL	PolandE
China4L	PortugalE
ColombiaL	RomaniaE
CroatiaE	Russian FederationL
Cuba	Rwanda
Curaçao3	SamoaL
Cyprus5E	San Marino
Czech RepublicE	São Tomé and Principe
Denmark6E	Serbia
Egypt*	Sierra Leone*
EstoniaE	SingaporeL
Eswatini* (formally called Swaziland)	Sint Maarten3
European Union7	SlovakiaE
FinlandE	SloveniaE
France8E	South KoreaL
GambiaL	SpainE
GeorgiaL	Sudan
GermanyEN	Swaziland* – See Eswatini
Ghana*	SwedenE
GreeceE	Switzerland
HungaryE	Syria
Iceland	Tajikistan
IndiaL	ThailandL
IndonesiaL	Tunisia
Iran	Turkey
IrelandE	Turkmenistan
Israel	Ukraine
ItalyE	United Kingdom12E
JapanL	United States of America
Kazakhstan	Uzbekistan
Kenya	Vietnam
KyrgyzstanL	Zambia
LaosL	Zimbabwe*
LatviaE

1) Official name: Organisation Africaine de la Propriété Intellectuelle. Its members are Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, The Republic of Congo, Côte d’Ivoire, Gabon Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Biaasu, Senegal and Togo.

2) i.e. Belgium, The Netherlands and Luxembourg – which are designated as one “member country”.

3) Constituent territories of the Netherlands Antilles until it was dissolved in October 2010.

4) Excluding Hong Kong and Macau.

5) Only effective in Southern (Greek) Cyprus because of the political situation in that country.

6) Covers Greenland as regards International Registrations and subsequent designations dated 11 January 2011 or later. Covers the Faroe Islands, as regards International Registrations and subsequent designations dated 13 April 2016 or later.

7) Automatically covers Jersey and also some (but not all) overseas territories of European Union countries. There are conflicting views on whether a EUTM automatically covers Gibraltar and whether an EU designation can be re-registered in Gibraltar and if it provides protection. Does not cover Northern Cyprus.

8) Including all Overseas Departments and Territories.

9) Does not currently include Tokelau.

10) North Macedonia was previously officially called the Former Yugoslav Republic of Macedonia and unofficially called Macedonia.

11) There are special requirements for licence recordals for The Philippines.

12) Also covers the Isle of Man, Jersey and the Falkland Islands.

E) European Union Member

L) Local recordal of licences.

N) Recordal of licences has no effect.

*) See section regarding enforceability in various countries.

Introduction

Registration of trademarks in multiple jurisdictions around the world is governed by two independent treaties – the Madrid Agreement (the Agreement) and the Madrid Protocol (the Protocol). Despite its name, the Protocol is a separate treaty and not a “protocol” to the Agreement. Together, the Agreement and the Protocol are known as the Madrid System for the International Registration of Marks (the Madrid System). States party to the Agreement and/or the Protocol and organizations party to the Protocol are referred to collectively as Contracting Parties. Together, they constitute the Madrid Union, which is a Special Union under Article 19 of the Paris Convention. The Madrid System is a centrally administered system (by the International Bureau of the World Intellectual Property Organization, WIPO) for obtaining a bundle of trademark registrations in separate jurisdictions, creating in effect a basis for an "international registration" of marks. This guide is intended to highlight the resources and important issues encountered in using the Madrid System for the international registration of marks.

The Madrid Agreement

The Agreement was established in 1891 for the purpose of providing a mechanism that would allow for a single and inexpensive international trademark registration and to eliminate the need for filing, prosecuting or maintaining separate registrations in multiple countries. Registration of a mark under the Agreement provides for the legal equivalent of registration in member countries designated by the mark owner. If the trademark office of the designated country does not communicate a refusal of registration to WIPO within 12 months (extended to 18 months under the Protocol) the mark will have the same protection as registered national marks in that country. The Agreement also provides for a simplified renewal system since registration to renew and chances to the original registration affecting all the countries included in the registration can be made through a single filing with WIPO.

Despite the advantages of registration through the Agreement the U.S. and several other major countries (e.g. Australia, Denmark, Finland, Greece, Iceland, Ireland, Japan, Netherlands, Republic of Korea, Sweden, the United Kingdom (click here for a list of members to the Agreement and the Protocol) never joined the Agreement because of perceived defects in its structure. These perceived defects included issues such as the requirement for registration in the home country before protection of the mark could be awarded, unlimited risk of “central attack” to the mark, a short examination period, fees that are lower that the corresponding fees in the home country’s trademark offices, and limitations on assignability.

The Madrid Protocol

The Protocol was adopted in 1989 to correct the perceived deficiencies in the Agreement. However, the Protocol maintains the initial intention of the Agreement, to create a system of simple and inexpensive international trademark registration. Therefore, while only 57 countries are presently part of the agreement, a total of 74 countries including the U.S. are party to either both the Agreement and the Protocol or to the Protocol by itself. See.

Overlapping Membership

Any party State to the Paris Convention for the Protection of Industrial Property may become a party to the Agreement or the Protocol or both. In addition, an intergovernmental organization may become a party to the Protocol (but not the Agreement) where these conditions are met: at least one of the Member States of the organization is a party to the Paris Convention and the organization maintains a regional office for the purposes of registering marks with effect in the territory of the organization. (See the Madrid System) The number of countries to which international registration may be extended corresponds to the national origin of the basic application or registration and may include the signatories of the Agreement, the Protocol, or both. Since the U.S. is not a signatory to the Agreement, an international registration based on application for U.S. trademark registration would be limited to protection in those countries which are members of the Protocol. However, multinational companies who register their marks under either the Agreement or the Protocol need to be aware of the open a closed sets of member parties created by overlapping membership. To ease the possible confusion created by overlapping membership, WIPO providesform MM2(E) for international application for the Protocol and form MM3(E) for those applications covered by both the Agreement and the Protocol.

Procedure for an International Application

Applications for international registration may be filed only by natural persons or legal entities within a country which is party to the Agreement or the Protocol. The Madrid system of international registration cannot be used to protect a trademark outside the Madrid Union. An international registration can only be filed for a mark that has already been registered (or, where the international application is governed exclusively by the Protocol, if registration has been applied for) in the Office of origin. An international application must designate one or more Contracting Parties in which the mark is to be protected. Applications may be amended to include further Contracting Parties after the original application for registration has been submitted.

There are three kinds of international application:

1 - An international application governed exclusively by the Agreement; this means that all the designations are made under the Agreement;

2 - An international application governed exclusively by the Protocol; this means that all the designations are made under the Protocol;

3 - An international application governed by both the Agreement and the Protocol; this means that some of the designations are made under the Agreement and some under the Protocol.

An international application must be presented to the WIPO International Bureau through the Office of origin and must contain at least:

1 - A reproduction of the mark (which must be identical with that in the basic registration or basic application)

2 - A list of the goods and services for which protection is sought, classified in accordance with the International Classification of Goods and Services (Nice Classification).

The United States Patent and Trademark Office (USPTO) is the Office of origin for applications originating in the US. It has electronic forms for the filing of an application for international registration, subsequent designation, and response to a notice of irregularity. These forms can be accessed here.

Applications that are governed exclusively by the Agreement must be in French; those that are governed exclusively by the Protocol or by both the Agreement and the Protocol, may be in either English or French, though the Office of origin may restrict the applicant’s choice to one of these languages.

See Madrid Agreement - Marks

Fees

International applications are subject to the following fees:

1 - The basic fee

2 - A complementary fee for each designated Contracting Party for which no individual fee is payable;

3 - An individual fee for any Contracting Party which is designated under the Protocol and has declared that it wishes to receive such a fee. The amounts of the individual fees are determined by the respective Contracting Parties and are published in the WIPO Gazette of International Marks; each of these Contracting Parties has the possibility, under the Common Regulations, to specify that such a fee is to be paid in two parts (the first part to be paid at the time of filing and the second part when, and if, the Office concerned is satisfied that the mark qualifies for protection);

4 - A supplementary fee for each class of goods and services beyond the third class; no supplementary fee is payable, however, where all the designations are ones in which an individual fee has to be paid.

In the US, an international applicant must pay fees to the USPTO and to the International Bureau. The USPTO charges a fee for certifying international applications and transmitting them to the International Bureau, called a "certification fee." The certification fee is $100.00, per class, if the international application is based on a single U.S. application or registration. The certification fee is $150.00, per class, if the international application is based on more than one U.S. application or registration.

The International Bureau requires payment of fees based on whether the reproduction of the mark is in black and white and/or in color, the particular Contracting Parties designated in the international application and the number of classes of goods and services indicated in the international application. The international application fees must be paid directly to the International Bureau in Swiss francs.

See the Schedule of Fees

Date of Registration

The Office of origin must certify that all aspects of the mark are the same as that in the basic registration or basic application. The Office of origin must also certify the date on which it received the request to present the international application; if the application is received by the International Bureau within two months of that date and there are no crucial elements missing from the application, then the date of receipt by the Office of origin will be the date of international registration. If the application meets all the applicable requirements, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks. The International Bureau then notifies each Contracting Party in which protection has been requested. International registration is effective for 10 years and may be renewed for subsequent 10 year periods upon payment of the required fees.

See Madrid Agreement - Marks

Searching for an International Mark

The Madrid Express database is a free system, updated daily, provided by WIPO to search for International Marks. The database has both simple search and structured search interfaces. Madrid Express includes all international registrations that are currently in force or have expired within the past six months. It reflects the situation of the International Register of Marks as at 01/11/2002. It also includes data relating to international applications and subsequent designations that have been received by the International Bureau but have not yet been recorded in the international register of marks. The user should be aware that in the case of marks not yet recorded, the International Bureau has not yet made a decision on their international applications or subsequent designations. WIPO makes every effort to ensure that the information in the database accurately reflects the data recorded in the International Register, however, the user must also be aware that the only official publication remains the Gazette and the only official statements by the International Bureau regarding the contents of the International Register for a given international registration remain the certified extracts from the Register established on request by the International Bureau.

The Madrid System for the international registration of marks offers brand owners the opportunity to apply and maintain protection for trademarks in 105 countries via one single procedure, in one language and one set of fees. However, levels of protection can vary and the process is not without its shortfalls.

For brand owners looking to register their valuable trademark rights in multiple international jurisdictions, the Madrid System for the international registration of marks provides a simple and cost-effective route to protection. Centrally administered by the World Intellectual Property Organisation (WIPO) in Geneva, the system enables brand owners to designate 105 countries (including Brazil as of 2 October 2019) in one single procedure, using one language and paying only one set of fees.

In our experience, some clients can obtain cost savings of more than 40% when compared to national filings.

How does the application process work?

An application for an International Right (IR) must be based on an initial national application in one of the member countries (e.g. an EU trademark application or registration). Applicants can opt to file their IR application at the same time as they make their national application or any time after (but within six months if they are to claim priority).

As with national applications, brand owners need to indicate the class of goods and services to be covered by the trademark, but they must also designate the territories of interest. All administration and maintenance is dealt with centrally by WIPO, but each country designated results in a trademark that exists in its own right, in the same way as a national trademark application would.

Benefits of using the Madrid System

For companies that have an international presence, the Madrid System offers a number of important advantages; in particular:

A simplified filing process which also leads to cost savings;
All administration is streamlined and centrally filed, registered, renewed and maintained;
All applications and communications take place in the applicant’s chosen language (English, French or Spanish);
No need to appoint local representatives in each designated country;
No document formalities, for example, powers of attorney (although statements of use are still required for some jurisdictions);
The geographical protection of an international mark can be extended at any time, so new designations can be added as they become of commercial interest;
There is a finite, fixed examination period: either 12 months or 18 months. If no objection is raised by the trademark office, the application will gain automatic protection;
If no objections are raised by the national trademark office or oppositions filed by third parties, there is no need to appoint a local representative in that country.
A designation of the European Union to an IR can be the ideal way of protecting a mark in the EU, particularly if an objection is anticipated from only part of the EU. The IR system allows the EU designation to be converted to national designations in the countries not affected by the objection and is often seen as a less cumbersome mechanism than conversion of a directly filed European Trade Mark (previously known as a CTM) application into national applications.

Disadvantages of the IR system

However, the Madrid System is not without its complications and vulnerabilities, both in terms of the process and the protection afforded by the resultant rights. In particular:

The IR application must be based on a ‘home’ filing. For clients in the European Union, this can be either a national or EUTM application or registration at present. Importantly, the international application is reliant on that home filing for a period of five years from the IR registration date. Accordingly, if the home filing is abandoned or cancelled during this dependency period, the international registration will also be automatically cancelled. This is known as a ‘central attack’. It is possible to ‘transform’ the designations of a centrally-attacked IR registration back to national applications; however, this will eliminate all the cost savings made by using the system.
As the WIPO system does not circumvent local trademark laws, objections can be raised by third parties on a country-by-country basis. This means that even if a mark has been accepted in the home jurisdiction, it doesn’t always follow that it will be accepted in each country designated in the IR application.
Deadlines for responding to office actions can be very short and it can be a challenge to appoint agents and file a timely response. China, for example, often has a deadline of less than two weeks.
The time taken to process applications can also vary wildly. In some jurisdictions, registration takes around one-two years and is often quicker than a national application. However, for designations such as the US and EU, the timescale is greatly increased.
There are some jurisdictions not covered by the System. A list of the member countries of both the Agreement and Protocol can be found on WIPO’s website.
In some countries, notably on the African continent, national laws have not been updated to recognise the international registration system which can lead to enforcement issues.

Is the Madrid System right for you?

Any company that operates globally will likely have an eye on key overseas territories, such as China, India, Japan and the US. The IR system can play a key role in this respect, as it enables companies to cost-effectively register trademark rights in the countries that have signed up to the Madrid Protocol. However, if they are to ensure that they are obtaining the protection that they need in the designated countries, brand owners are advised to consider the following before beginning the application process:

How many countries will be designated? As many or as few as you wish. Depending on the countries required, it may be cheaper or easier to file national applications, especially if a company is interested only in one or two designations. In addition, for some designations, the Protocol’s requirements will actually be stricter than those of the national requirements.
Will the trademark be used in the same way in each country? An IR cannot be changed to reflect differences in use/presentation in each designation, but to a certain extent it is possible to limit the goods/services by individual country. For example, to avoid a known objection.
Which countries will be designated? Unfortunately, in certain jurisdictions (most notably India), an IR-acquired right is more vulnerable than a right acquired through a national registration. For this reason, it is best not to adopt a one-size-fits-all strategy for registration; instead, companies need to weigh up the cost and efficiency benefits of the Madrid System with the need to acquire broad protection in critical markets.
What about Brexit? Please note that post-Brexit, the UK will no longer be covered when designating the EU in an IR application (click here for the latest advice on IRs designating the UK on Brexit).

In addition to the above, a number of anomalies exist in certain key territories; most importantly:

US

In addition to the WIPO trademark renewal date, the US also has a 6th year Statement of Use deadline and a 10th year Renewal and Use deadline. These are not always made clear when the registration comes through, so it’s important to work with an IP attorney who can remind you of such key deadlines.
International applications are not eligible to be registered on the Supplemental Register.
The classes applied for through the Madrid System cannot be amended, even if the correct class is already included in the application.

China

China’s Trademark Office divides each designated class into an unusual system of subclasses. A trademark in a given subclass will cover all items in that subclass, but is not effective on items in other subclasses, even if they fall within the same class under the IR application (which uses the Nice Classification system).
‘Retail services’ in Class 35 are not allowed.
Although the designation will be afforded protection once the examination process has been completed, applicants will not receive a registration certificate. This can cause issues if brand owners need to litigate in China as they will need to apply for a Supplemental Certificate, a process that incurs additional fees and can take up to six months to obtain.

Japan/ Cuba

Designation fees applied in two parts, with the second part becoming payable once the application is found acceptable for protection. Failure to pay the second party fee within the set period will result in the designation being cancelled.

Singapore

Each class within the Madrid application will be allocated a separate local number.

India/ Philippines

Can only be added to an existing IR if the IR was filed after the countries acceded to the IR (Madrid) system.

Making the most of the System

Despite these challenges and inconsistencies in registration, the IR process is an important, effective and highly regarded system for obtaining trademark rights in multiple international jurisdictions. As part of a robust trademark registration strategy, it enables brand owners to obtain protection in certain territories cost-effectively, even though they may also need to shore up protection in certain challenging jurisdictions with national registrations.

The “Madrid System” is a centrally administered system of obtaining a bundle of trademark registrations in different jurisdictions. It is governed by two treaties, the Madrid Agreement and the Madrid Protocol, and is administered by the International Bureau of WIPO in Geneva, Switzerland. Madrid System permits the filing, registration and maintenance of trade mark rights in more than one jurisdiction provided that the target jurisdiction is a party to the system. It is a primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. However the scope of Madrid system is different viz a viz “European Community Trade Mark System” so far as creating an international registration is concerned because it provides a mechanism for obtaining trademark protection in many countries around the world rather than seeking protection separately in each individual country. It creates a bundle of national rights capable being administered centrally as opposed to the “European Community Trade Mark System” which creates International Registration.

More on WIPO: http://wipo.int/portal/index.html.en

INDIA as a Member:

Under the WIPO-administered Madrid system, a trademark owner may protect a mark in up to 88 territories known as Contracting Parties plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). India also became a signatory to Madrid Protocol on April 8th, 2013 and subsequently acceded on July 8th, 2013, bringing the total number of members to 90.

For list of Members of Madrid System:

http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

India as a member of Madrid System:

http://www.wipo.int/pressroom/en/articles/2013/article_0008.html

Working of the Madrid System:

The Madrid System has a mechanism under which a trademark owner having made an application for registration or having an existing registration in a member jurisdiction, which is called as ‘Basic Application / Registration’, may obtain “International Registration” for their trademark through World Intellectual Property Organisation (WIPO). Thereafter the owner of the mark may opt for securing the protection in any one or more member jurisdictions by virtue of the “International Registration”, which process is called as ‘Designation’. Further by virtue of Madrid protocol, it has become possible for a trademark owner to obtain ‘International Registration’ at the time of making an application for registration in any member jurisdiction, concurrently. A trademark owner can obtain trademark protection in any or all member states by filing one application in one jurisdiction with one set of fees and make any alterations in information (Name, Address etc.) and renew registration across all applicable jurisdictions through a single administrative process.

However as a corollary, the natural flipside of the aforementioned characteristic of Madrid System / Protocol is that in case a ‘Basic Registration / Application’ is refused / cancelled or withdrawn, the International registration would also get refused / cancelled or withdrawn to the same extent. For instance an application for registration of a mark for herbal products like soaps, face wash and shampoo is pending but the ‘Basic Application’ for shampoo is cancelled then the ‘International Registration’ of the same mark for shampoo will also get cancelled. Similarly if ‘Basic Application’ is refused the ‘International Registration’ will also get refused. This system whereby a ‘Basic Application’ is attacked for registerability is called ‘Central Attack’. In order to mitigate the effects a successful central attack, an ‘International Registration’ is transformed into a series of applications in each jurisdiction, a process known as ‘Transformation’, though this process is an expensive proposition but makes good sense apparently not only because of this advantage but also because the resulting applications will receive registration date of international registration as their filing date.

For Reference: http://www.wipo.int/madrid/en

FAQs

1. What is Madrid System?

Madrid System is a centrally administered system of obtaining a bundle of trademark registrations in different jurisdictions managed by the International Bureau of World Intellectual Property Organisation (WIPO) in Geneva, Switzerland. Under the WIPO-administered Madrid system, a trademark owner may protect a mark in over 80 countries plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language.

2. What are the advantages of Madrid System / Protocol?

The Madrid Protocol is useful to obtain an international registration on a pending TM application, so that the owner can apply for the International Registration’ concurrently or immediately after filing an application in a member jurisdiction. In addition, it provides to the applicant, the following advantages:

One application in one place going through national Trade Mark Office to WIPO
One set of documents in one language, English, French or Spanish
One fee in one currency
One registration number, one renewal date covering more than one country
No need for legalisation of documents
Cost Effective
Only one request for change of name or address of the holder of the registration

3. When did Madrid System become effective in India?

India became a signatory to Madrid Protocol on April 8th, 2013 and subsequently acceded on July 8th, 2013, bringing the total number of members to 90. With effect from 8th July 2013, registered and pending trade mark proprietors in India have become eligible to apply for International Registration of their mark in the designated member territories. Similarly, as of that date, foreign trademark owners can seek extension of protection of an international registration of a mark to India.

4. Who can file application under Madrid Protocol from India?

Any trademark who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in India can submit an international application under Madrid Protocol from India. Applicants wishing to use the Madrid system must either hold registration or pending application for trademark protection in Indian trademark registry before seeking international protection.

5. Can India be designated as a Contracting Party in International Registrations existing prior to India acceding to Madrid Protocol?

No. Protection of a mark under International registration, can only be extended to India in cases where an application for International Registration under Madrid Protocol is made after India acceding to Madrid Protocol i.e. 08th July 2013.

6. What is the duration of an international registration?

An international registration lasts for ten years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the International Bureau.

7. What is the cost for filing an international application under Madrid Protocol from India?

An international applicant must pay an amount of Rs.2000/- as Handling Fee to Indian TM Registry. This fee is charged for certifying international applications and transmitting them to the International Bureau. The basic fee for international registration is Swiss Francs(SFR) 653 for non color marks for upto 3 classes payable in Swiss Francs. A supplementary fee of SFR 100 is payable for each extra class. In addition to the basic application fee, an additional supplementary fee of approximately SFR 100 for each designated country is charged. Though in certain cases the fee may vary as some of the member countries like Japan and India have fixed individual Fee. There is also a provision of expanding the geographical scope of protection of your mark by adding more countries at later stages.

8. After the mark in an international application registers, can the holder of the international registration request an extension of protection in additional countries?

Yes. The holder of an international registration may designate additional Contracting Parties in a subsequent designation. A subsequent designation is a request by the holder of an international registration for an extension of protection of its international registration to additional Contracting Parties.

9. In what way is Community Trade Mark Registration different from International Registration under Madrid System?

CTM: A single registration creates a single unified right throughout the European Union. The trademark that is the subject of a CTM application must be registrable in all EU Member States; if a ground for rejection applies in just one of the EU Member States, the mark cannot be registered as a CTM, although conversion to national applications is possible in some cases.

MP: Under the Protocol, an application creates rights in those member countries that grant protection through registration. Even if the IR application is refused protection in some designated countries, the application can proceed to registration in the remaining designated countries.

CTM: CTM applications are only examined on absolute grounds. For example, likelihood of confusion due to a prior-filed registration is not a ground for refusal of CTM applications.

MP: An application can be refused registration in the examination process by any of the designated countries under their national laws. Grounds for refusal in member countries may be more extensive than for a CTM application and may include, among other things, refusal based on likelihood of confusion.

CTM: A CTM registration is issued by the Office for Harmonization in the Internal Market (OHIM).

MP: The World Intellectual Property Organization (WIPO) maintains the International Register of marks and administers the Madrid Protocol System.

CTM: There are no restrictions on applicants that can apply for a CTM. A CTM applicant is not required to have a commercial establishment in the EU.

MP: An applicant for an IR must be a national of, or domiciled in, one of the member countries of the Protocol or have an industrial or commercial establishment in one of the member countries (its “home country”).

CTM: The filing fee for a CTM application covers all 27 countries; no choice of countries is allowed.

MP: Fees for an application filed under the Madrid Protocol are dependent on the number of countries designated by the applicant.

CTM: The initial CTM registration period is ten years from the date of filing the application and is independent of any other application or registration.

MP: The initial IR period is ten years from filing; however, it is dependent upon a valid home application or registration for the first five years.

CTM: A CTM applicant is free to file for whatever goods and services it wishes. Priority under the Paris Convention based on a previously filed application may be claimed, but additional goods and services may also be covered (without priority).

MP: In an application filed under the Madrid Protocol, the description of goods and services must be no broader than those in the home application regardless of whether priority is claimed.

CTM: It is possible to obtain an injunction against infringement that covers the entire EU.

MP: Action for infringement is taken through the courts of the country concerned and generally any injunction extends to that country only.

About the Author: Mr. Sharad Saini, Trade Mark Attorney at Khurana & Khurana and can be reached at: sharad@khuranaandkhurana.com

MADRID SYSTEM

Internationalize your trademark with the Madrid System

Ensures trademark protection in several countries, through a single application.

The legal basis of the Madrid System is the Madrid Agreement (1891), an international treaty which was superseded by the entry into force of the Madrid Protocol, whereas both implemented the so-called “international trademark” system. These treaties innovated as it was no longer required for applicants to file multiple applications for their trademarks in each individual country, being only necessary to file one single application based in the original trademark, simplifying in a significant manner the bureaucratic processes and thereby reducing time and costs spent.

However, the designated national offices retain the right to decide if trademarks are registered or not, according to their own national laws, which means that the process is not unitary while creating a bundle of national trademarks. The Madrid System also simplifies after registration trademark management, as only one application is necessary to file assignments and changes of name or address.

Madrid System

Madrid – The International Trademark System

Madrid Agreement Concerning the International Registration of Marks

Summary of the Madrid Agreement Concerning the International Registration of Marks (1891) and the Protocol Relating to that Agreement (1989)

Introduction

Who May Use the System ?

The International Application

International Registration

Statement of Grant of Protection or Refusal of Protection

Effects of an International Registration

Advantages of the Madrid System

Contents

History and development[edit]

Members[edit]

Advantages[edit]

Disadvantages[edit]

Developments since 2000[edit]

Madrid Protocol

Protocol on Environmental Protection to the Antarctic Treaty (The Madrid Protocol)

Mining prohibition

Environmental principles of the Madrid Protocol

Background to the Madrid Protocol

The Australian – French proposal

11th Special Consultative Meeting

Entry into force

Member Regions

Who can apply?

Home Application/Registration

What are the advantages?

What can be applied for?

How do I apply?

Examination by WIPO

Examination by designated member countries/regions

Enforceability in various countries

Assignments & Licensing

What are the disadvantages of International Registrations?

Madrid Agreement

Seeking Trade Mark Protection for the European Union

The Future

Member countries and regions (at 2 October 2019)

Introduction

The Madrid Agreement

The Madrid Protocol

Overlapping Membership

Procedure for an International Application

Fees

Date of Registration

Searching for an International Mark

How does the application process work?

Benefits of using the Madrid System

Disadvantages of the IR system

Is the Madrid System right for you?

US

China

Japan/ Cuba

Singapore

India/ Philippines

Making the most of the System

Internationalize your trademark with the Madrid System

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