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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]
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 February 2023, the Madrid System consists of 114 members covering 130 countries; [4] known collectively as the Madrid Union, they represent more than 80% of world trade. [4]
This section relies largely or entirely on a single source .(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:
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]
This section relies largely or entirely on a single source .(December 2016) |
Adherence to the convention or the protocol includes membership of the "Madrid Union." As of June 2019 [update] , 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 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]
This section relies largely or entirely on a single source .(December 2016) |
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. [8]
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.[ citation needed ]
The World Intellectual Property Organization is one of the 15 specialized agencies of the United Nations (UN). Pursuant to the 1967 Convention Establishing the World Intellectual Property Organization, WIPO was created to promote and protect intellectual property (IP) across the world by cooperating with countries as well as international organizations. It began operations on 26 April 1970 when the convention entered into force. The current Director General is Singaporean Daren Tang, former head of the Intellectual Property Office of Singapore, who began his term on 1 October 2020.
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In patent law, industrial design law, and trademark law, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.
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Intellectual property rights (IPRs) have been acknowledged and protected in China since 1980. China has acceded to the major international conventions on protection of rights to intellectual property. Domestically, protection of intellectual property law has also been established by government legislation, administrative regulations, and decrees in the areas of trademark, copyright, and patent.
A geographical indication (GI) is a name or sign used on products which corresponds to a specific geographical location or origin. The use of a geographical indication, as an indication of the product's source, is intended as a certification that the product possesses certain qualities, is made according to traditional methods, or enjoys a good reputation due to its geographical origin.
Trade mark law of the European Union is governed by European Union law together with national law within those countries which are also member states of the European Union. Trade marks may be registered within individual countries, or across the whole of the EU. In the case of a European Trademark is granted a unitary character that applies protection for that mark across the whole of the EU with certain exceptions. Exceptions include but not limited to: specific language conflicts in a particular reason as well as the case where there was a previously granted national trademark that would conflict in the case of a given EUTM.
Intellectual property law in Romania has developed significantly in the period since the Romanian Revolution of 1989 because of the need to enforce various regional and international treaties and agreements, such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the European Directives on Biotechnological Inventions, on Trademarks and Geographical Indications, and on Supplementary protection certificates, the Trademark Law Treaty, the Patent Law Treaty, and the European Union regulation on the Community Trademark, and the need to harmonize domestic patent law with the European Patent Convention (EPC) and with the European Union.
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WIPO Lex is an online global database launched in 2010, which provides free public access to intellectual property laws, treaties and judicial decisions from around the world. The World Intellectual Property Organization (WIPO) maintains and develops the database.
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