Introduction to the Madrid Protocol for trade mark registration

Introduction to the Madrid Protocol for trade mark registration

The Madrid System for the international registration of trade marks

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. Under the Madrid system, a single international registration can provide trade mark protection in multiple jurisdictions throughout the world including the European Union, USA, Japan and China.

International registrations also have administrative advantages. An international application to protect a trade mark in a number of territories is filed through a single trade mark office. In addition, applications to renew an international trade mark, or to record a transaction such as an assignment, in multiple territories can be filed centrally. There are however a number of significant disadvantages to the Madrid Protocol procedure and so it is not always the best option.

The Madrid system is governed by two treaties, the Madrid Agreement and the Madrid Protocol. Countries may be members of the Agreement and/or the Protocol and intergovernmental organisations (e.g. the European Union) may be members of the Protocol.

There are three types of international applications: applications governed by (i) the Agreement only, (ii) the Protocol only, or (iii) both the Agreement and Protocol. As the United Kingdom (UK) and European Union are signatories to the Protocol only, many UK applicants will only able to file applications governed exclusively by the Protocol and to seek protection in Protocol countries. It is this type of international application which is discussed below.

Who can file an international (Madrid Protocol) application?

Any natural person or any legal entity (e.g. a company) may file an international (Madrid Protocol) application provided that they satisfy the following requirements:

(a) Qualification Requirement

An applicant must (i) have a real and effective industrial or commercial establishment (i.e. genuine business premises) in a contracting party, (ii) be domiciled (i.e. resident) in a contracting party, or (iii) be a national of a contracting party.

(b) Requirement for a Basic Application/Registration

An applicant must also have at least one earlier trade mark application or registration (referred to as a “basic application/registration”) in a contracting party where they fulfil the above qualification requirement. The basic application(s)/registration(s) should cover the same mark and goods/services as the applicant wishes to protect internationally.

For example, a company with business premises in the UK and a UK trade mark application or registration could file an international (Madrid Protocol) application based on the UK application or registration.

Filing applications for trade mark registration under the Madrid Protocol

An applicant can file an international (Madrid Protocol) application with the trade mark office of any contracting party where they fulfil the qualification requirement, and 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.

This trade mark office through which an international application is filed is known as “the office of origin”.

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 whose office is the office of origin. (The applicant must, of course, already have at least one application filed with, or registration granted by, the office of origin in order to be able to file an international (Madrid Protocol) application).

Those contracting parties in respect of which protection is sought are designated when the international application is filed.

Other contracting parties may also be designated later. For example, the holder of an international (Madrid Protocol) registration might wish to make a “subsequent designation” of a contracting party that they had decided not to designate when they filed their international application, or that had not been party to the Protocol when the application was filed. There is an additional cost to file a "subsequent designation" and so it is cheaper to designate all territories at once, where appropriate.

Renewals and proof of use

An international registration must be renewed every 10 years and some territories, notably the United States, have additional requirements to provide proof of use at specified deadlines.

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.

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