Madrid Protocol

Last updated

The Madrid System, also known as the Madrid Protocol, [1] is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. It was established pursuant to the multilateral treaties Madrid Agreement Concerning the International Registration of Marks of 1891 and the Protocol Relating to the Madrid Agreement (1989), which has been the sole governing treaty since 2016. [2]

Contents

The Madrid System provides a centrally administered system for obtaining multiple trademark registrations in separate jurisdictions; it does not create a single unified registration across different jurisdictions, as in the case of the European Union trademark system. [3] Rather, applicants file a single international trademark application and pay one set of fees to apply for protection in any or all countries that are members of the system; each country has discretion to grant the application. Once the trademark authority of a designated country grants protection, the mark is protected in that jurisdiction just as if that office had registered it. [1]

The Madrid System is administered by the International Bureau of the United Nations World Intellectual Property Organization (WIPO) in Geneva, Switzerland. As of May 2025, the Madrid System consists of 115 members covering 131 countries; [4] known collectively as the Madrid Union, they represent more than 80% of world trade. [4]

History and development

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:

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 1 December 1995, and became operative on 1 April 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. [5] 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. [5] The treaty was eventually ratified during the presidency of George W. Bush. [4] With the accession of the U.S. and EU to the Madrid Protocol on 2 November 2003, and 1 October 2004, respectively, most major trading jurisdictions have joined the Madrid system.

On 31 July 2015, Algeria deposited its instrument of accession and acceded 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 became effective across the entire Madrid system. [6]

Members

Madrid Union members (green) and jurisdictions that are not members but are members of either OAPI or the EU (blue). MadridUnionMembersOct2020.svg
Madrid Union members (green) and jurisdictions that are not members but are members of either OAPI or the EU (blue).

Adherence to the convention or the protocol includes membership of the "Madrid Union." As of May 2025, there are 115 members made out of 131 countries. [4] The original treaty has 55 members, all of which are also party to the protocol (when Algeria joined the Madrid Protocol on 31 October 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 any practical effect). The term 'Madrid Union' can be used to describe those jurisdictions party to either the agreement or the protocol (or both). [7]

The protocol has been in operation since 1996 and has 100 members [4] making it more popular than the agreement, which has been in operation for more than 110 years and has 55 members. [7]

Table of Madrid Union members with year of accession to the agreement and protocol, as applicable
Contracting partyAgreementProtocol
Flag of the Taliban.svg Afghanistan 2018
African Intellectual Property Organization (OAPI) 2015
Flag of Albania.svg Albania 19952003
Flag of Algeria.svg Algeria 19722015
Flag of Antigua and Barbuda.svg Antigua and Barbuda 2000
Flag of Armenia.svg Armenia 19912000
Flag of Australia (converted).svg Australia 2001
Flag of Austria.svg Austria 19091999
Flag of Azerbaijan.svg Azerbaijan 19952007
Flag of Bahrain.svg Bahrain 2005
Flag of Belarus.svg Belarus 19912002
Flag of Belgium (civil).svg Belgium [a] 18921998
Flag of Bhutan.svg Bhutan 20002000
Flag of Bosnia and Herzegovina.svg Bosnia and Herzegovina 19922009
Flag of Botswana.svg Botswana 2006
Flag of Brazil.svg Brazil 2019
Flag of Brunei.svg Brunei Darussalam 2017
Flag of Bulgaria.svg Bulgaria 19852001
Flag of Cape Verde.svg Cabo Verde 2022
Flag of Cambodia.svg Cambodia 2015
Flag of Canada (Pantone).svg Canada 2019
Flag of Chile.svg Chile 2022
Flag of the People's Republic of China.svg China [b] 19891995
Flag of Colombia.svg Colombia 2012
Flag of Croatia.svg Croatia 19912004
Flag of Cuba.svg Cuba 19891995
Flag of Cyprus.svg Cyprus 20032003
Flag of the Czech Republic.svg Czech Republic 19931996
Flag of North Korea.svg North Korea 19801996
Flag of Denmark.svg Denmark [c] 1996
Flag of Egypt.svg Egypt 19522009
Flag of Estonia.svg Estonia 1998
Flag of Eswatini.svg Eswatini 19981998
Flag of Europe.svg European Union [d] 2004
Flag of Finland.svg Finland 1996
Flag of France.svg France 18921997
Flag of The Gambia.svg The Gambia 2015
Flag of Georgia.svg Georgia 1998
Flag of Germany.svg Germany 19221996
Flag of Ghana.svg Ghana 2008
Flag of Greece.svg Greece 2000
Flag of Hungary.svg Hungary 19091997
Flag of Iceland.svg Iceland 1997
Flag of India.svg India 2013
Flag of Indonesia.svg Indonesia 2018
Flag of Iran.svg Iran 20032003
Flag of Ireland.svg Ireland 2001
Flag of Israel.svg Israel 2010
Flag of Italy.svg Italy 18942000
Flag of Jamaica.svg Jamaica 2022
Flag of Japan.svg Japan 2000
Flag of Kazakhstan.svg Kazakhstan 19912010
Flag of Kenya.svg Kenya 19981998
Flag of Kyrgyzstan.svg Kyrgyzstan 19912004
Flag of Laos.svg Lao People's Democratic Republic 2016
Flag of Latvia.svg Latvia 19952000
Flag of Lebanon.svg Lebanon 20072025
Flag of Lesotho.svg Lesotho 19991999
Flag of Liberia.svg Liberia 19952009
Flag of Liechtenstein.svg Liechtenstein 19331998
Flag of Lithuania.svg Lithuania 1997
Flag of Luxembourg.svg Luxembourg [a] 19241998
Flag of Madagascar.svg Madagascar 2008
Flag of Malawi.svg Malawi 2018
Flag of Malaysia.svg Malaysia 2019
Flag of Mexico.svg Mexico 2013
Flag of Monaco.svg Monaco 19561996
Flag of Mongolia.svg Mongolia 19852001
Flag of Montenegro.svg Montenegro 20062006
Flag of Morocco.svg Morocco 19171999
Flag of Mozambique.svg Mozambique 19981998
Flag of Namibia.svg Namibia 20042004
Flag of the Netherlands.svg Netherlands [a] [e] 18931998
Flag of New Zealand.svg New Zealand [f] 2012
Flag of North Macedonia.svg North Macedonia 19912002
Flag of Norway.svg Norway 1996
Flag of Oman.svg Oman 2007
Flag of the Philippines.svg Philippines 2012
Flag of Poland.svg Poland 19911997
Flag of Portugal (official).svg Portugal 18931997
Flag of South Korea.svg South Korea 2003
Flag of Moldova.svg Republic of Moldova 19911997
Flag of Romania.svg Romania 19201998
Flag of Russia.svg Russian Federation 19761997
Flag of Rwanda.svg Rwanda 2013
Flag of Samoa.svg Samoa 2019
Flag of San Marino.svg San Marino 19602007
Flag of Sao Tome and Principe.svg Sao Tome and Principe 2008
Flag of Serbia.svg Serbia 19921998
Flag of Sierra Leone.svg Sierra Leone 19971999
Flag of Singapore.svg Singapore 2000
Flag of Slovakia.svg Slovakia 19931997
Flag of Slovenia.svg Slovenia 19911998
Flag of Spain.svg Spain 18921995
Flag of Sudan.svg Sudan 19842010
Flag of Sweden.svg Sweden 1995
Flag of Switzerland (Pantone).svg  Switzerland 18921997
Flag of Syria (2025-).svg Syrian Arab Republic 2004
Flag of Tajikistan.svg Tajikistan 19912011
Flag of Thailand.svg Thailand 2017
Flag of Trinidad and Tobago.svg Trinidad and Tobago 2020
Flag of Tunisia.svg Tunisia 2013
Flag of Turkey.svg Turkey 1999
Flag of Turkmenistan.svg Turkmenistan 1999
Flag of Ukraine.svg Ukraine 19912000
Flag of the United Kingdom.svg United Kingdom [g] 1995
Flag of the United States.svg United States of America 2003
Flag of Uzbekistan.svg Uzbekistan 2006
Flag of Vietnam.svg Vietnam 19492006
Flag of Zambia.svg Zambia 2001
Flag of Zimbabwe.svg Zimbabwe 2015
  1. 1 2 3 Benelux is considered one country for Madrid-system purposes.
  2. Excluding Hong Kong and Macao.
  3. Including Greenland and the Faroe Islands.
  4. Malta is the only member state of the EU that is not also a member of the Madrid Union; an EUTM obtained via Madrid will cover Malta.
  5. Including Curaçao, the Caribbean Netherlands, and Sint Maarten, which have registries independent of the unified Benelux office; excluding Aruba.
  6. Excluding Tokelau.
  7. Including the Isle of Man and (from 1 January 2021) Guernsey and Gibraltar; excluding other Crown Dependencies and British Overseas Territories.

Advantages

The Madrid System allows to file a single international trademark application in one language, and pay one set of fees in one currency, to apply for protection of a brand in multiple territories simultaneously, representing over 80% of world trade. The management of the international trademark portfolio is done centrally and digitally through WIPO. [8] [9] [10]

Disadvantages

One disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of the basic application or basic registration within five years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent. [11] [12] 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’. [13] [14] [15] 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.

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. [16] [10]

See also

Notes

  1. The full name of the Madrid Agreement is the "Madrid Agreement Concerning the International Registration of Marks of April 14, 1891 (as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Nice on June 15, 1957, and at Stockholm on July 14, 1967, and as amended on September 28, 1979)".

References

  1. 1 2 "Madrid Protocol". uspto.gov. United States: U.S. Patent and Trademark Office. Retrieved 23 May 2021.
  2. World Intellectual Property Organisation (WIPO), ed. (2021). Guide to the International Registration of Marks under the Madrid Protocol. WIPO publication. Geneva, Switzerland: World Intellectual Property Organization (WIPO). ISBN   978-92-805-3250-0.
  3. Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (Official Journal No. L78, 24.3.2009, p.1)
  4. 1 2 3 4 5 "Members of the Madrid Union". wipo.int. Retrieved 30 May 2025.
  5. 1 2 Report by the International Trademark Association, April 2003
  6. Algeria Joins the Madrid Protocol, WIPO, 7 August 2015
  7. 1 2 "Madrid Agreement Concerning the International Registration of Marks". www.wipo.int. Retrieved 9 June 2025.
  8. "Benefits of the Madrid System". madrid-system. Retrieved 2 June 2025.
  9. Weimann, Christine (12 May 2024). "Registering international trademarks under the Madrid System (Updated)". ABG IP. Retrieved 2 June 2025.
  10. 1 2 "The Madrid Protocol: Key Benefits, Risks and Strategies" (PDF). inta.org. International Trademark Association.
  11. "Difficulties with the Madrid Protocol for trade mark registration". Hindles. Retrieved 30 May 2025.
  12. "How to Register an International Trade Mark - HGF" (PDF). hgf.com. August 2024.
  13. "Madrid System Vs. National Filing: The Good, The Bad and The Ugly | Osha Bergman Watanabe & Burton | Intellectual Property Lawyers". www.obwb.com. Retrieved 30 May 2025.
  14. SAWASATO, Kazutaka. "INTRODUCTION To THE MADRID SYSTEM" (PDF). wipo.int.
  15. BTLJ (19 April 2019). "Madrid's "Central Attack" in Transnational Trademark Law: Practice, Procedures and Considerations". Berkeley Technology Law Journal. Retrieved 30 May 2025.
  16. "Differences between national trademark registration and international trademark registration through the Madrid System". trademarkfactory.com. Retrieved 30 May 2025.