Madrid Protocol

Overview

The Madrid Protocol is a key international treaty that facilitates the registration of trademarks across multiple jurisdictions. Officially known as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, it was adopted in 1989 to streamline the process of obtaining trademark protection in various countries. The protocol is administered by the World Intellectual Property Organization (WIPO), which is a specialized agency of the United Nations.

Map of Madrid Union members as of October 2020

History

The Madrid Protocol was established to address the limitations of the earlier Madrid Agreement, which was signed in 1891. The original agreement had a limited number of member countries and was considered inflexible. The protocol introduced several improvements, including the ability to file applications in English, French, or Spanish, and the option for countries to extend the time limit for refusal of protection.

Functionality

The Madrid Protocol allows trademark owners to seek protection for their marks in multiple countries by filing a single application with their national or regional trademark office. This application is then transmitted to WIPO, which administers the international registration. Once registered, the trademark is protected in all member countries designated by the applicant.

Application Process

To apply for an international trademark under the Madrid Protocol, an applicant must first have a national or regional trademark application or registration. This "basic mark" serves as the foundation for the international application. The applicant can then designate other member countries where they seek protection. The international application is examined by each designated country, which can refuse protection based on its national laws.

Advantages

The Madrid Protocol offers several advantages to trademark owners:

• Simplification: A single application and fee structure simplifies the process of obtaining international trademark protection.
• Cost-Effectiveness: Reduces the cost of filing separate applications in each country.
• Flexibility: Allows for the addition of new countries to an existing registration.
• Centralized Management: Changes to the trademark, such as renewals or ownership transfers, can be managed centrally through WIPO.

Challenges

Despite its benefits, the Madrid Protocol also presents challenges:

• Dependency on Basic Mark: The international registration is dependent on the basic mark for the first five years. If the basic mark is canceled, the international registration may also be affected.
• Varying National Laws: Each designated country applies its own laws, which can lead to refusals or limitations on protection.

Membership

As of October 2020, the Madrid Protocol has 107 members, covering 123 countries. This includes most major economies, making it a vital tool for businesses seeking global trademark protection.

Related pages

• World Intellectual Property Organization
• Trademark
• Intellectual property
• Madrid Agreement