Madrid system

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The Madrid System, also known as the Madrid Protocol [1] or simply Madrid, 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. [4]

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; [5] known collectively as the Madrid Union, they represent more than 80% of world trade. [6]

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 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. [7] 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. [7] The treaty was eventually ratified during the presidency of George W. Bush. [8] With the accession of the U.S. and EU to the Madrid Protocol on November 2, 2003, and October 1, 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. [9]

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 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 any practical effect). The term 'Madrid Union' can be used to describe those jurisdictions party to either the agreement or the protocol (or both). [10]

The protocol has been in operation since 1996 and has 100 members [11] making it more popular than the agreement, which has been in operation for more than 110 years and has 55 members. [10] The primary reason the protocol is more popular than the agreement 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 trademark application, so that a trademark 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 trademark 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.'

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 [lower-alpha 1] 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 [lower-alpha 2] 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 [lower-alpha 3] 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 [lower-alpha 4] 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 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 [lower-alpha 1] 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 [lower-alpha 1] [lower-alpha 5] 18931998
Flag of New Zealand.svg  New Zealand [lower-alpha 6] 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.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.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 [lower-alpha 7] 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 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 and the payment of a single fee. [12]

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. 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. [13]

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.

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)".

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References

  1. "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. "Madrid Protocol". www.uspto.gov. Retrieved 6 March 2023.
  5. "Members of the Madrid Union". www.wipo.int. Retrieved 6 March 2023.
  6. Members of Madrid union
  7. 1 2 Report by the International Trademark Association, April 2003
  8. WIPO web site, List of Members of the Madrid System
  9. Algeria Joins the Madrid Protocol, WIPO, 7 August 2015
  10. 1 2 "Madrid Agreement Concerning the International Registration of Mark and Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks – Status" (PDF). WIPO. 15 January 2020.
  11. "Members of the Madrid Union". WIPO.
  12. "Registering international trademarks under the Madrid System (Updated)". ABG IP. 20 October 2021. Retrieved 20 October 2021.
  13. World Intellectual Property Organization