The complexity of international trade mark registration rules could tie any seasoned business owner in knots. When protecting your intellectual property on a large scale, and an international one at that, it’s important to make sure you don’t cut corners, but simultaneously find out the most effective way of doing so. The Madrid Protocol is, for now, an excellent option when trying to make the trade mark application process as efficient as possible.
Find out how to simplify and streamline your international trade mark applications, by reading our Madrid Protocol FAQs.
- What is the Madrid System?
- What is the difference between the Madrid Agreement and the Madrid Protocol?
- What did the Madrid Protocol do?
- What is a Madrid Protocol trade mark?
- What countries are affected by the Madrid Protocol? And has this changed post-Brexit?
- How does the Madrid Protocol application process work?
- How much does the Madrid Protocol application cost?
- What are the advantages of the Madrid Protocol?
What is the Madrid System?
The Madrid System is a centralised international trade mark registration system, administered by the International Bureau of the World Intellectual Property Organization (WIPO).
The Madrid System is made up of certain processes set out in two documents – the Madrid Agreement Concerning the International Registration of Marks (the ‘Madrid Agreement’) and the Madrid Protocol. We’ll explain more about these documents below.
Many countries (and certain regions) around the world have chosen to sign up to the Madrid System, by signing the Madrid Agreement (historically) or the Madrid Protocol (in more recent years). Those that have signed up to the Madrid System are collectively referred to as ‘Contracting Parties’.
What is the difference between the Madrid Agreement and the Madrid Protocol?
The Madrid Agreement is a multilateral treaty, signed in 1891, which created the international trade mark registration system. It was revised several times over the years but became largely obsolete after the Madrid Protocol came into force.
A protocol is an agreement that amends, supplements, or clarifies a treaty. The Madrid Protocol relates to the Madrid Agreement, and has been in force since April 1996. The Protocol now takes precedence over the Madrid Agreement.
What did the Madrid Protocol do?
There were many countries (including the UK and several other countries of commercial importance) that did not sign up to the Madrid Agreement. The aim of the Madrid Protocol was to make the Madrid System more flexible and compatible with the legislation of those countries, to encourage those countries to apply to be party to the system.
The Madrid Protocol allows applicants to obtain trade mark protection in more than one country by submitting just one application. A trade mark owner may file a single international application with their ‘home’ country’s trade mark office (known as the ‘Office of Origin’), which is then submitted to WIPO. WIPO submits this application to the trade mark office of each of the Contracting Parties with whom the applicant is seeking protection. Each national trade mark office then examines the application in accordance with its domestic intellectual property law, as if the application had been made using its own national system. We explore the application process in further detail below.
What is a Madrid Protocol trade mark?
A Madrid Protocol trade mark is an international trade mark registration obtained under the procedure set out under the Madrid Protocol.
What countries are affected by the Madrid Protocol? And has this changed post-Brexit?
WIPO maintains a list of those countries that are party to the Madrid Protocol.
The EU joined the Madrid Protocol in 2004 and so the UK is a Contracting Party.
International trade mark registrations protected in the EU under the Madrid System designating the European Union (including those with designations made during the transition period) will continue to have effect in the United Kingdom during the Brexit transition period (i.e. until 31 December 2020).
However, the position post-Brexit is currently uncertain. Following the end of the transition period (from 1 January 2021), international trade mark registrations designating the EU, protected under the Madrid Protocol, will no longer be valid in the UK.
The UK’s Intellectual Property Office and WIPO are discussing measures that will be put in place to ensure that the holders of those registrations continue to enjoy protection for their marks in the United Kingdom after the transition period ends.
How does the Madrid Protocol application process work?
The first step in the international trade mark registration process is to register a ‘basic’ trade mark in your ‘home’ country.
An international application may then be filed with your Office of Origin. An individual or legal entity may make an application if they are domiciled, have an industrial or commercial establishment in, or are a citizen of one of the countries party to the Madrid System.
The applications can be filed in English, French or Spanish, unless the Office of Origin specifies which of these languages must be used.
The application must specify at least one or more Contracting Parties with whom protection is sought, but protection can be sought with more Contracting Parties at a later date.
The Office of Origin will certify the application and submit it to WIPO for examination.
WIPO will then undertake a formal examination of the international trade mark application. If approved, the mark will be recorded on the International Register and published in the WIPO Gazette of International Marks.
At this stage, a certificate of international registration will be issued. However, the scope of protection of the international registration is only determined after WIPO notifies the relevant Intellectual Property Offices in the territories where protection is being sought. WIPO will notify the offices at this stage and each office will carry out a substantive examination of the mark.
Each IP Office will make a decision as to whether to grant protection within the applicable time limit of 12 – 18 months (in accordance with their applicable national law). WIPO will notify you of each decision.
If your application fails in a particular territory, this does not have an impact on the other territories. If protection is not granted in a particular territory, appeals can be made directly to the relevant IP Office. If protection is granted, a statement of grant of protection will be issued.
How much does the Madrid Protocol application cost?
The fees payable in relation to an international trade mark application under the Madrid System will vary depending on a number of factors, including where you want to protect your mark, and how many classes of goods and services you would like to cover.
However, the fee will be made up of the following:
- A basic fee
- A complementary fee for each Contracting Party designated
- A supplementary fee for each class of goods and services in excess of three
All fees must be paid in Swiss francs.
What are the advantages of the Madrid Protocol?
The Madrid Protocol simplifies the process of applying for protection in a range of different countries. Rather than being required to file a separate application for each country that you wish to seek protection in, in several different languages, with different fee regimes and applicable law, you can file one application with your Office of Origin and pay one set of fees in order to potentially gain protection in a huge number of countries worldwide. It is also simpler to manage and administer your portfolio through a central system going forward.