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The Madrid system for the international registration of marks, also conveniently known as the Madrid system or simply Madrid, is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world.
The Madrid system provides a centrally administered system of obtaining a bundle of trademark registrations in separate jurisdictions, all of which are based on an "international registration". Madrid provides a mechanism for obtaining trademark protection in many countries around the world, which is more effective than seeking protection separately in each individual country or jurisdiction of interest.
Madrid modifies the territorial application of trademark laws. Prior to the widespread adoption of the system, it was not possible to obtain an 'international trademark', where a single trademark registration would automatically apply around the world. Madrid now permits the filing, registration and maintenance of trade mark rights in more than one jurisdiction on a global basis.(1) The Madrid system is administered by the International Bureau of the World Intellectual Property Organisation in Geneva, Switzerland.
Members
As of 15 January 2007, there are 80 members comprising the Madrid Union of jurisdictions which have become party to the Agreement or the Protocol or both. The primary reason why the Protocol — which in 2004 has been in operation for less than 10 years and has 72 members — is more popular than the Agreement — which has been in operation for more than 110 years and has 57 members — 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 trade mark application, so that a trade mark owner can effectively apply for international registration concurrently with or immediately after filing an application in a member jurisdiction. By comparison, the Agreement requires that the trade mark 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’ (see below).
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 World Intellectual Property Organization. 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 (eg. changes of name or address) and renew registration across all applicable jurisdictions through a single administrative process.
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 deleted for whatever reason, the international registration will only cover 'clothing and footwear'. The protection afforded by the international registration in each designated member jurisdiction will therefore only extend to 'clothing and footwear'. If in this example the basic application had been rejected as a whole, the international registration would also have been 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 jurisdictions 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. (Source: World Intellectual Property Organisation, www.wipo.int/madrid/en/)
The costs savings which usually result from using the Madrid system are negated by the requirement to use local agents in the applicable jurisdiction if any problems arise.
Recent developments
Two significant recent developments in international trade mark law were the accession of the United States and the European Union to the Madrid Protocol on 2 November 2003 and 1 October 2004, respectively. With the addition of these jurisdictions to the Protocol most major trading jurisdictions have joined the Madrid system.
External links
Notes
Note (1): Another important example of a supra-national system for the protection of trademark is the Community Trade Mark system in the European Union.
Note (2): 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
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