The Madrid System: Madrid Agreement and Madrid Protocol

Introduction

More than a century ago, nine countries established a special Union for the International Registration of Marks, at present known as the Madrid system. Since then, the Madrid system has expanded and evolved to meet the ever-changing business needs. More and more countries have signed up for this unique international trademark registration system administered by the World Intellectual Property Organization (WIPO), a UN specialized agency based in Geneva, Switzerland. The Madrid system has helped businesses register and protect millions of marks worldwide.

There are two treaties that govern the system: the Madrid agreement of 1891 and the Madrid protocol of 1989. Its provisions made the Madrid system more modern and flexible, and have led to its global expansion. Through the Madrid system, WIPO offers centralized registration and management of international trademarks. Rather than having to file numerous applications for each separate export market, with the Madrid system, an enterprise needs to file only one application in one language at one national or regional trademark office by paying through one currency. It provides a fast, efficient, and cost-effective way for small, medium, or large enterprises to protect their marks in the countries and organizations that are

International trademark registration process under Madrid system

STAGE 1 – Application at National/ Regional IP office

The first stage is to file an application at the national level at the applicant’s “home” IP office. This application is referred to as ‘basic mark’. The international application is submitted through the same regional IP office to WIPO, after the certification process by the home IP office.

STAGE 2- Formal Examination by WIPO

WIPO formally examines the application and initiates the process of approval. After the approval, the applicant’s mark is recorded in the International register (WIPO Gazette of International Marks). WIPO then issues a certificate of the international registration and accordingly notifies the respective countries where the applicant desires to protect his mark.

STAGE 3- Substantive examination by Each designated country’s regional IP office-

The IP offices of the countries where the applicant wants to protect his mark would substantively examine the application within 12 to 18 months as per the applicable laws of their country. WIPO then records the final decisions of these offices and accordingly notify the applicant.

Fee Structure

Under the Madrid Protocol, payment of official fees is a simple process. An applicant has to pay through one centralized window rather than having to wire funds all over the world. These fees are calculated on a per-country basis. There is a basic fee payable for the actual application, it's either 653 Swiss francs, or 903, Swiss francs, depending on whether the mark needs to be reproduced in color or not. Adding to the basic fee there is a supplementary fee of 100 Swiss francs for each class of goods and services beyond three classes, and there's also a complimentary fee for each contracting party designated. This complimentary fee is either 100 Swiss francs or some other amount as requested by each country.

Who can avail benefits of the Madrid Protocol?

All the countries that are signatory to the Madrid Agreement or Madrid Protocol are collectively known as the Madrid Union. An enterprise seeking to avail the benefit under this Protocol needs to have its business situated in one of the 122 countries of the Madrid Union. For example, X has a business incorporated in the US and wants to trademark his brand in the US, Canada, France, Sweden, Russia, Australia, Mexico, Brazil, China, and India. For that, it needs to first file a direct trademark application in the US, known as the basic or national application, and then file the international trademark application for countries Canada, Russia, Australia, Mexico, Brazil, China, and India.

Filing of international trademark where a country is not a part of the Madrid Union-

Companies that have a formal business presence in the countries which are not part of the Madrid Union, cannot file a direct international trademark application For instance, Nepal is not a part of the Madrid Union while India is. A Nepalese company X sells its product to India and wants to obtain a trademark for the same in India. In the above instance, X can’t obtain a trademark over its product in India through the Madrid system. To obtain the trademark of the product company X has to separately apply to the regional IP office in Nepal and fulfill the criteria listed under Nepalese local law.

A country that is a part of the Madrid Union cannot obtain a trademark over its product in a country that is not a part of the Madrid Union through Madrid protocol. For instance, an Indian company won’t be able to obtain a trademark over its product in Nepal through the Madrid application. The Indian company needs to separately apply to Nepalese firms in order to get it.

Advantages of the Madrid System-

1. Makes the process of Obtaining trademark protection in several countries easier and cost-effective.

2. Only one application needs to be filed. This saves time and efforts which would otherwise be spent on going through different trademark regulations in each country to file the application.

3. The protocol allows the international application to be filed in English, Spanish or French. Thus, it reduces the need to translate the trademark application to numerous different languages, as not every country recognizes English/Spanish/French as its official language.

4. It allows a company to obtain a trademark in any or all member states of the protocol by filing a single application in one jurisdiction with one single payment of fees and make any alterations and renew the registration across all applicable jurisdictions through a single administrative process.

Limitations of the Madrid System:

1. International Madrid application and registrations are heavily dependent on the national application or registration. This means that if the home application or registration is amended, denied, withdrawn, or canceled during the five years following the international registration date, the associated international applications and registrations are treated the same way. This is usually referred to as a ‘central attack’. This dependency lasts for the first five years after the issuance of the international registration. Once the international registration has been in effect for over five years, it becomes independent from the basic registration.

2. The international application is examined by each national trademark office separately, and if they issue objections, a local agent is needed to address the possible objections.

3. If an applicant at the national level is rejected then the international application based on that flawed direct application would also fail. Sometimes companies may want to wait for their home application to clear the opposition period, so as to make sure no central attack is started against them. However, when it comes to new brands\ it may become a problem as waiting until after the opposition period would cause them to lose the advantage of the conventional priority. This priority allows them to claim the date of your international application, back to the filing date of their home application. The reason behind it is that in order to take advantage of the conventional priority, you have to file your international application within a six-month window after filing your basic application and the opposition period usually takes longer than the six-month window.

As new countries are joining the Madrid system it has become more efficient than it has ever been, it has a bright future ahead as the global system for the International Registration of Marks. The Madrid system can be said to be the number one solution for international trademark registration.