Any person or business can use the Madrid system to facilitate the protection of their trade mark as long as:
1. The applicant of the trademark has a real and effective connection with a contracting party to the Madrid System.
This means that the owner of the trademark must be a citizen or be domiciled in a member country.
If a company owns the trademark it needs to have an industrial or commercial establishment located in a country that is part of the Madrid System.
2. The applicant has filed for the trademark in the country from which it seeks to extend the mark to other countries. The trademark that serves as the basis for the Madrid application is called the basic application or basic trademark.
Countries that are part of the Madrid System have ratified at least one of the following international treaties:
The two international Madrid treaties are:
1. The Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement).
2. The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol).
Countries can be members of either one or both of these treaties. “Madrid protocol countries” refers to countries that are only members of the Madrid Protocol.
Both the Agreement and the Protocol are administered by the International Bureau of the World Intellectual Property Organization (WIPO).
If a country is a member to both the Agreement and the Protocol only the rules of the Protocol will apply. The rules of the Madrid Agreement only apply to processes that began in countries that have only joined the Madrid Agreement.
There are two main differences regarding what the trademark owner may base their trademark application on.
The first difference is the Madrid Agreement requires that an international application be based on a home country registration. Under the Protocol rules, the applicant may base their international process on an application that is filed but not yet registered.
The second difference has to do with the consequences of the basic trademark being cancelled. Basic trademark refers to the trademark used to extend the process to other countries. When the basic trademark is cancelled the situation is referred to as a “central attack”.
Under the Madrid Agreement if a “central attack” is received the outcome will affect all the extended trademarks. The International Bureau (WIPO) will notify the trademark office of all countries to which the basic trademark was extended.
Under the Madrid Protocol a central attack will not necessarily lead to the loss of all trademarks extended to other countries. The applications or registrations in each designated country can be transformed into national applications. As such the trademarks will be treated as if they were filed directly through the local trademark office of each country. The trademarks will be independent from the Madrid global registration process.
Advantages of the Madrid System
The Madrid System allows for a centralized management of all registered trademarks through the WIPO IP PORTAL. The owner of the trademarks registered via the Madrid process will be able to manage their live trademarks through a single process. This makes renewing trademarks and keeping owner information up to date an easy and straightforward matter.
All the processes through WIPO will be carried out in one single language, regardless of what and how many countries the trademark is extended to.
The initial costs for filing the trademark application are fixed. The costs to initiate a Madrid application process can be seen through the WIPO Madrid Fee Calculator. Therefore, before proceeding you will know what are the administrative fees to file the trademark. Once the trademarks are registered, all fees for future renewals of the trademarks will also be clear.
Many countries have extremely long registration processes. In many countries the trademark offices have considerable backlogs. It can be a number of years until the trademark offices finally refuse or accept a trademark for registration.
On the other hand, through the Madrid system the receiving countries have a maximum of 18 months to notify possible refusals. If no notifications are received after this 18-month period the international system will consider the applications to be automatically registered.
Drawbacks of the Madrid System
If the base trademark is canceled within the first five years, all subsequent registrations may be lost. This is what we referred to before and is known as a central attack.
If a central attack is received the extensions may be transformed into local trademarks under certain circumstances. The transformation of Madrid protocol trademarks into local applications will increase costs. Local representatives will be needed for each local process.
The immense majority of countries follow the Nice class system for the description of goods and services of a trademark. Some countries do not allow for general descriptions and will require products or services to be specified.
A typical example of this is what happens with trademarks for software. The description of a product as “software” will be accepted in the European Union and in a majority of countries. However, in the United States or Canada the nature of the software will need to be specified.
Initial refusals may be received if a description of products needs to be limited. If this happens the response will need to be lodged by a local trademark attorney. Although these issues are simple to overcome, having to rely on local agents will increase the costs of the process.
Local attorneys will always be needed if the trademarks receive initial refusals. The response to such refusals will need to be done by local trademark agents. In this case, searching for representatives may be difficult and will increase the costs initially considered.
Restriction to future trademark transfers. Transfers of trademarks registered through Madrid can only be done between nationals of countries that are members to the system.
Many countries to which Madrid Protocol trademarks are extended have considerable administrative lags. Some countries also have less than decent IT infrastructure that causes failure to property communicate provisional refusals to the trademark applicants. These cases of mismanagement many times cause unclear situations that end up in litigation.
The system rules establish that if a trademark is not refused within an 18 month period it will automatically be registered by the Madrid System. However, the local trademark office may not recognize this. These situations end up requiring the assistance of local attorneys.
Yes. A preliminary trademark search is always advisable. A basic trademark search through the global brand database is accessible online through the website of the World Intellectual Property Organization. However, this search should in NO way be considered enough.
Once a trademark is filed through the Madrid system the international bureau will only carry out a formal examination. After this the application will be sent directly to the trademark offices of all designated countries. The trademark office of each country will examine the application in the same way as if it had been filed locally.
The local trademark examination process of each designated country includes a search of prior registered or filed trademarks. The local trademark office that received the international application will not only search for prior trademark filed through the international system. It will search for any similar trademarks registered in their country.
Whalemarks offers extensive trademark search services. Our services will allow you to determine the chances your application has of being successfully registered. It is advisable to do this before filing the application to avoid starting a process that has little chances of success.
Madrid System trademark registrations should always be handled by trademark experts. Contact us if you are interested in using the Madrid System. Our experts will evaluate your particular situation and advise you on the best strategy to protect your trademarks.