Madrid System for International Registration of Trademarks
The Madrid System for the international registration of trademarks was established in 1891 and functions under the Madrid Agreement and the Madrid Protocol. The Madrid Agreement and the Madrid Protocol are treaties for international trademark protection. The system is administered by the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. The Madrid System offers a trademark owner the opportunity to protect their trademark in several countries by filing one application and creating a bundle of national rights that is administered centrally, all bearing the same registration number. There are currently 83 member countries to the Protocol, and 56 member countries to the Agreement. A list of member countries may be viewed on WIPO's website. Many countries are members to both the Agreement and the Protocol. The U.S. is a member to the Protocol only. The determination of under which treaty the international application is filed depends on the country of origin. If the country of origin and the designated country are both parties to the Agreement, even if one or both is also party to the Protocol, the determination is made under the Agreement. If the country of origin and the designated country are both parties to the Protocol, but only one - or neither - is a party to the Agreement, the determination is made under the Protocol. When applying for an international trademark registration under the Madrid System, the applicant must have registered or applied for a trademark with their Office of Origin. The Office of Origin then submits an international application to WIPO. The request must designate the countries in which they are interested in obtaining protection. WIPO will review the application and notify the designated countries that an international application has been filed. The designated countries then examine the application under their own rules and regulations. If an application does not meet the designated country’s requirements, a notice of refusal will be sent to WIPO. If all requirements are met, the trademark will be considered registered and protection is granted in each of the designated countries. There are some differences between the treaties. For instance, under the Protocol, the international application can be based on a pending application in its country of origin. Under the Agreement, the application must be based on a registration in its country of origin. Further, the time limit for a designated country to refuse the international application under the Agreement is twelve (12) months. Under the Protocol, the time limit is also twelve (12) months, but with the option of extending the time limit to eighteen (18) months. Also, under the Agreement there is no option to convert to a national application in the event of the cancellation of the original application. The Protocol allows the applicant to convert or nationalize in the designated country within three months of the cancellation. This is an important aspect as the international registrations remain dependent on the original application for five (5) years from the date of registration. After the five (5) year dependency period expires, the international registrations and country designations become independent of the original case. Some major advantages to using the Madrid System include the opportunity to extend protection to additional countries at any time after filing, and international filings may be made without obtaining local counsel. As stated above, under the Protocol, if a cancellation occurs the application can be converted to a national application within three months. The Madrid System is a useful tool in obtaining international protection for trademark owners economically, and offers easy management through central registration.