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International trademark protection: introduction to the Madrid system
As an alternative to filing national trade mark applications, the Madrid system for the international registration of trade marks provides an efficient and cost-effective way of securing international trade mark protection in countries which are members of the Madrid system.
The Madrid system is governed by two treaties, the Madrid Agreement (dating from 1891) and the Madrid Protocol (from 1989). Over the years, the Madrid Protocol has come to dominate, and it is now rare for an International Registration to be filed under the Agreement.
This article gives a brief overview of the system, focusing on the Protocol.
What is an International Registration?
Under Madrid, filing a single application - a so-called International Registration - can lead to trade mark protection in multiple jurisdictions throughout the world, including the European Union, the USA, Japan and China. The applicant is able to select the jurisdictions from all signatories to the Protocol, of which there are currently around 114.
International Registrations have both cost and administrative advantages. A single application is all that is needed in order to seek protection in a number of territories. Similarly, renewals in all jurisdictions, or the recordal of transactions such as assignments are easily managed. While there are also some disadvantages, Madrid is often a good choice for those seeking international trade mark protection.
Who can file an application for an International Registration under the Madrid Protocol?
Any natural person or any legal entity (e.g. a company) may file an international Registration (Madrid Protocol), provided they satisfy certain criteria:
(a) Qualification Requirement
An applicant must have a real and effective industrial or commercial establishment (i.e. genuine business premises) in a contracting party, or be domiciled in a contracting party, or be a national of a contracting party.
(b) Requirement for a Basic Application/Registration
An applicant must already have at least one trade mark application or registration (referred to as a 'basic' or 'home' application/registration) in a contracting party where they meet the qualification requirement. The basic application(s)/registration(s) must be for the identical trade mark, and must cover the same mark and goods/services.
For example, a company with business premises in the UK and a UK trade mark application or registration could file an application for an International Registration based on that UK application or registration.
Filing applications for trade mark registration under the Madrid Protocol
An applicant can file an application for an International Registration with the trade mark office of any contracting party where they fulfil the qualification requirement, and where they have at least one basic application/registration. For example, a UK company would file through the UK Intellectual Property Office if they wanted to rely on the UK registration as their basic registration. The country of qualification must match the IPO, so a UK company could not, for example, base an International Registration on an EU application or registration.
Where can protection be sought?
An applicant may seek protection in any or all of the contracting parties to the Madrid Protocol, except the contracting party of the office of origin.
Contracting parties in respect of which protection is sought are designated at the time of filing the International Registration, or at a later date by way of 'subsequent designations'. From the cost perspective, it is preferable to make all designations on filing, but circumstances sometimes require a different approach, for example, where expansion of the business supports the corresponding expansion of the trade mark protection.
Renewals and proof of use
As is the case for direct filed trade marks throughout the world, International Registrations must be renewed every 10 years. Renewal fees are paid centrally, and there is the opportunity to allow redundant designations to expire.
Our services
At Hindles, we are experts are protecting trade marks around the world, whether through direct applications or International Registrations under the Madrid Protocol. If you would like to discuss trade mark filing options or request a quote, please do not hesitate to contact us.