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Madrid System for the International Registration of Marks
Adopted on June 27, 1989 in Madrid, Spain's capital, the Madrid Protocol relates to the Madrid Agreement concerning the international registration of marks and came into force on December 1, 1995. The Protocol is one of two treaties establishing the Madrid System for international registration of trade marks. The Madrid Agreement of 1891 was the first treaty to allow for the submission of a single worldwide trade mark registration with the World Intellectual Property Organization (WIPO) in Geneva, which would thereafter serve to register the mark in several countries. The Madrid Protocol was created to enhance the system for international registration of trade marks after several nations had difficulties with the Madrid Agreement's implementation. As a result, each year an increasing number of trademark holders resort to the Madrid Protocol in order to secure trademark protection in international markets. The Madrid Protocol has been ratified by 128 nations. As a filing treaty rather than a convention to harmonize substantive laws, the Madrid Protocol is less controversial. Trademark holders (including individuals and businesses) can save time and money by filing a single application with a single agency (in a single language) for protection in several countries (paying a single set of fees) in a single currency.
Moreover, no local agent is needed to file the application. Any of these languages can be used to submit an application. An international registration application is equivalent to a national registration application for the mark in each of the applicant's specified countries. Once protection has been granted by the trade mark office in a chosen nation, the mark enjoys the same legal standing as if it had been registered with that office. Since a single procedure is all that is needed to record subsequent changes in ownership or in the name or address of the holder with WIPO's International Bureau, the Madrid Protocol also streamlines subsequent management of the mark.
Before the Protocol was implemented, it was typically difficult for trade mark owners to carry out valid assignments of their marks worldwide due to the onerous administrative requirements for the regular transfer of company assets. To record an assignment of a trade mark with all member nations, the Protocol allows the holder of an international registration to submit a single request with a single payment.
Registration renewal likewise comprises a simple, single procedural procedure. International registration lasts 10 years, with 10-year renewal periods. If trademark owners elect to seek protection in more than one member country, or if more nations agree to the Protocol, they may specify additional countries. The Madrid Protocol allows the holder of an international registration to convert it into a series of national applications in each designated country within five years of the cancellation of the basic application or registration on which the international registration is based.
The priority date of the initial international registration is preserved in each of these national applications. In the event that international registration fails, the holder is nonetheless protected by the rights obtained in each member country.
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