The Madrid system, also called Madrid Protocol, is officially known as the Madrid System for the international registration of marks. It is a simple and cost-effective way to register and manage trademarks worldwide. In most countries, you can apply for protection with just one application and one set of costs.
History The Madrid system involves two treaties; the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement. The first treaty was concluded in 1891 and entered into force in 1892, and the second treaty came into action on 1 April 1996.
The Madrid Agreement and Madrid Protocol were adopted at the diplomatic conferences held in Madrid, Spain. The Madrid system is regulated by the International Bureau of WIPO, which maintains the International Register and issues the WIPO Gazette of International Marks. It is the leading international system for facilitating the registration of trademarks in varied jurisdictions around the globe.
Objectives of the Madrid System The Madrid System seeks to achieve two goals. To begin with, it makes securing trademark protection easier (trademarks and service marks). The effects described in paragraph 30 are produced by registering a mark in the International Register in the Contracting Parties designated by the applicant. Later on, additional Contracting Parties may be named. Secondly, the subsequent management of that protection is more manageable because an international registration is equal to a bundle of national registrations. There is just one registration to renew, and any changes to the holder’s ownership, name, or address, as well as a restriction on the list of products and services, can all be entered in the International Register with a single simple procedural step.
The Madrid System, on the other hand, is flexible enough to accommodate transferring registration for only some of the designated Contracting Parties, or only some of the goods or services, or to limit the list of goods and services concerning only some of the designated Contracting Parties. Members of the Madrid Union The Madrid Union comprises the Madrid Agreement and Protocol Contracting Parties.
Currently, the Madrid Union has 109 members from 125 countries. These members account for more than 80% of global trade, with room to increase as membership grows. How does the Madrid System work? From WIPO.int Website The “Office of Origin” refers to the Contracting Party’s office where applicants apply for or register their fundamental mark. They can choose Contracting Parties in which they would like to protect their mark in their international application or broaden the geographical scope of their international registration under the Madrid System later.
Stage 1: Apply to your National or Regional Intellectual Property Office (Office of origin) You must first register with, or apply with, your “home” IP office before filing an overseas application. The primary mark refers to the registration or application. Next, you must submit your international application to the same IP Office, which will certify and forward it to the World Intellectual Property Organization (WIPO).
Stage 2: Formal examination by the World Intellectual Property Organization (WIPO). Your international application is only subjected to a formal examination by WIPO. Your mark is entered into the International Register and published in the WIPO Gazette of International Marks once approved. WIPO will subsequently provide you with an international registration certificate and notify the IP Offices in all of the countries where you want your trademark protected.
Stage 3: National or regional IP offices conduct a thorough examination (Office of the designated Contracting Party) Following their legislation, the IP Offices of the regions where you seek to protect your mark will decide within the necessary time restriction (12 or 18 months). The decisions of the IP Offices will be recorded in the International Register by WIPO and will notify you. If an IP Office refuses to protect your mark in whole or in part, this decision will have no bearing on the decisions of other IP Offices. Following its legislation, you can challenge a denial judgement immediately before the IP Office is involved.
If an IP Office agrees to protect your mark, a statement of grant of protection will be issued. Tenure of Protection Your trademark’s international registration is valid for ten years. You can renew your registration directly with WIPO at the end of each 10 years, affecting the designated Contracting Parties. Who Is Eligible to Use the Madrid System? 7. A natural person or a legal entity related to a member of the Madrid Union through an accurate and effective industrial or commercial establishment, domicile, or nationality may apply for international registration (an “international application”).
8. The Madrid System can only be used by people who have that connection. Only the Madrid Union can protect an international mark registered under the Madrid System. What are the advantages of the Madrid System? Cost-effectiveness One of the Madrid System’s significant features is its fast and cost-effective international trademark registration process. It will probably be less expensive than applying for registration in each member country/region separately. However, charges vary depending on various factors, including the countries/regions chosen, and we at Brainiac will be pleased to provide you with an estimate after we’ve discussed your needs.
We can manage the application process for all countries/regions. It saves even more money because we don’t need to hire local counsel in most cases, though in other countries, it is required even if there are no objections. Ease in Filing The Madrid System requires that a single application be filed in a single office, in a single language, and for a single fee, implying that a single registration covers as many national registrations as the entrepreneur or business requires, as long as the country in question is part of the Madrid System. When registering for trademark protection individually in each nation saves entrepreneurs and businesses a lot of time, energy, and money.
Favourable for Entrepreuneurs Since its inception 30 years ago, the Madrid System has been primed for expanding and including new nations, making it favourable for entrepreneurs or enterprises wishing to expand their global portfolios. With many countries participating in the Madrid System, entrepreneurs and firms can seek trademark protection in worldwide marketplaces — according to WIPO, Madrid Union members account for more than 80% of global trade.
As a result of WIPO’s welcoming of new and additional member countries to the Madrid System, individuals and enterprises can benefit from a broader global range of trademark protection. Some countries/regions may receive protection more swiftly than if they took the national route. The Madrid System may also assist the national/regional economy in general and government finances in particular.
Boosting the National Economy The Madrid System helps the country’s exports by making it easier to protect trademarks abroad. Furthermore, it makes it easier for individuals and companies based in other Madrid System Contracting Parties to obtain protection for their marks in the country/regional territory because they can seek protection for their marks in any of the applicable Contracting Parties by simply designating them in the international application or a subsequent designation.
This facility aids in the improvement of the investment climate for international companies. Conclusion To summarise, the Madrid Protocol will provide trademark owners with more chances in the worldwide market to create and expand their businesses across the Madrid Protocol’s member states. The Madrid System of worldwide trademark registration will be inclusive, allowing entities and individuals from contracting countries to register and maintain their trademarks straightforward, affordable, and efficient.