Trademark Registration Under Madrid Protocol – How the System Works

Businesses often look for convenient and cost-effective solutions to register and manage a trademark worldwide. Madrid protocol is one of those methods that allows them to apply for trademark protection in up to 124 countries by filing a single application. It is a centralized system that enables modification, renewal, and expansion of a global trademark portfolio.  The following article sheds light on the crucial aspects of this protocol that one must know.

What is Madrid Protocol?

It is an international registration trademark system organized by the World Intellectual Property Organization (WIPO). International registrations provide a set of rights administered centrally by WIPO in Switzerland.

The Madrid Protocol, in effect, is an updated version of a system called the Madrid Agreement. The signatories of the Madrid Agreement joined Madrid Protocol on 31 October 2015 as it now supervises all international applications and registrations. The Agreement now stands redundant as no operations are conducted under it.

Trademark protection under the Madrid system can only be acquired by countries and regions that are part of it. The figure below lists the three regions that can be designated in an international registration under the Madrid Protocol.

Figure: Designated regions in an international registration under the Madrid Protocol

1. Benelux: This union comprises Belgium, the Netherlands and Luxembourg. They are treated as a joint entity or country. Furthermore, it is not possible to designate them separately.

2. European Union: All member states of the European Union except Malta can be designated separately.

3. African Intellectual Property Organization: It is not possible to designate the member countries of OAPI separately, nor is it possible to file standalone national applications in the member countries. These countries have stipulated that trademark protection can only be acquired through OAPI.

Who All Can Apply For Trademark Registration Under Madrid System

Any UK company or national may apply for international registration if they have a UK application or registration. Apart from that, one can use the Madrid System for the registration of a trademark if one has a personal or business connection with any of the system’s members. It implies that the applicant must “either be domiciled; have an industrial or commercial establishment in member countries or be a citizen of one of the 124 countries covered by the Madrid System’s 108 members”. Similarly, one can use the system if one has a trademark application filed or registered in the member country/region.

The cost of international trademark registration and registering a mark of color can be found here. Apart from the basic fee, an additional cost is charged depending on the countries where one seeks protection and the classes of goods and services involved.

Advantages of Madrid Protocol

1. Lesser Cost: The cost of trademark registration under the Madrid system is certainly lesser than applying separately for registration in each member country. However, as mentioned above, the costs depend on various factors, including the countries designated.

2. Saves Attorney Fee: Madrid system handles the application procedure for all countries unless objections arise. This leads to further cost saving as businesses need not instruct local attorneys separately. However, there are some countries where this is a requirement even if there are no objections to the application.

3. Faster Process: Trademark protection in some countries can be obtained more quickly in the Madrid Protocol in comparison to the national route. This is because the system stipulates and follows strict time limits for the registration process.

4. Centralized System: Under the international system, the change of names, assignments, etc. in the record is carried out centrally via WIPO. Thus, this process saves cost in contrast to recording such events separately in each member country.

5. Prevents Loss of Rights: An international registration can replace a corresponding national/regional registration without loss of rights. On the contrary, if filed separately, national or regional registration may get impacted.

6. Allows Addition of Countries: Once applicants obtain registration, they can designate additional “contracting parties”. The request for the amendment can be made with WIPO with the help of their subsequent designation system.

Disadvantages of Madrid Protocol

1. Effects of National Application: If an applicant’s national application loses effect in whole or in part, within five years from the date of international registration, the Madrid Protocol registration stands canceled to the same extent.

2. Greater Cost of National/Regional Application: If the above-mentioned situation arises, then it is possible to file national/regional applications having the same coverage, claiming a date back to that of the international registration. In such a scenario, the total cost will then be rather greater in comparison to the scenario.

3. Issues While Designating Country: Before it can be assumed that protection exists in a country (because some countries still do not advise that they have accepted a designation), it has to be assumed that the trademark is protected if the relevant time for advising of refusal has expired and no refusal has been advised.

Conclusion

The main objective behind introducing Madrid Protocol was to make the system of trademark registration more convenient. This is because every region or country follows a varying system for the same. Since the process of application can be complex, organizations must consider seeking assistance from trademark service providers for trademark filing and searching. The due diligence can help them to save time and money while applying for international trademark registration.

Sagacious IP’s trademark filing services are designed to offer end-to-end support to businesses with trademark application and prosecution process in India and globally. Our trademark professionals are adept at assisting you with the registration process.

-Kritika Rai (Trademark) and the Editorial Team

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