The Madrid System to register international trademarks is governed by the Madrid Agreement (1891) and the Madrid Protocol (1989) and is administered by the World Intellectual Property Organization(WIPO) located in Geneva, Switzerland.
This system offers the owner of a trademark in one of the member States the possibility of extending protection of the mark to several countries with a single application filed at the relevant national office (office of origin). The national office sends the documentation to WIPO in Geneva which then notifies the national offices of the countries designated (national phase). For example, a Spanish trademark can be used to seek protection in the US, Australia, Israel and Malaysia.
The principal requirement to file an international trademark application is to have a national application in a member country of the Agreement and/or Protocol, which is known as the “basic mark”.
|Necessary information for the application|
It should be noted that once the international application enters the national phase at the national trademark offices (continuing with our example, in Australia, Israel and Malaysia), a provisional refusal is often issued. It should be borne in mind that although the application is an international application, marks are granted in accordance with applicable domestic laws in each country, that is, in our example, US, Australian, Israeli and Malaysian law, respectively.
Who can use the Madrid system?
Any individual or legal entity with an effective industrial or commercial establishment in a Member State of the Madrid Protocol, or who has a domicile in that state, or who has an establishment or domicile in the territory of an intergovernmental organization that is a party to the protocol, or who is national of a State that is a member of that organization.
How does the registration process work?
Once the application has been filed at the office of origin, an examination is conducted to ensure that the mark complies with formalities and technical requirements. If everything is correct, the international application is sent to the WIPO. The WIPO carries out another examination to ensure that it complies with formal requirements, including whether a correct description has been provided of the goods and services claimed by the international application.
The WIPO then notifies the trademark offices of each country designated in the international application (in our example, Australia, Israel and Malaysia). Each office will then grant or refuse protection of the international registration in its territory applying its domestic laws.
If the trademark office in the designated State does not refuse the application within a specific time period (12 or 18 months, depending on the circumstances), the trademark is considered registered. The most relevant aspect is that once it is registered the international trademark has the same effects as a national mark in the countries it designates.
How long does an international trademark registration last?
The mark is granted for ten years from the registration date indicated by WIPO and can be renewed indefinitely for successive ten-year periods.
What are the steps involved in keeping an international trademark registration in force?
In order to keep the registration in force it has to be renewed every 10 years and the relevant fees must be paid.
In addition, in order to maintain the rights in the registration it must be put to use on the goods and services it protects. Any changes in the representation of the mark, such as when a logo is brought up to date, should also be assessed from a trademark standpoint, since it may be necessary to file a new application.
Finally, if the trademark owner changes its name or address, or assigns ownership of the registration to a third party, those changes must be registered.
What are the advantages of an international trademark?
The Madrid System simplifies the filing of trademarks at an international level. The administrative steps required to obtain protection of a trademark in several countries are streamlined and obtaining and maintaining protection is more cost-effective.
The formalities after registration are easier, since changes with respect to ownership or the renewal of the mark can be made in every country designated in one single process. It is also possible to designate new countries subsequently at any point in the future.