The Madrid System for International Trademarks

The Madrid System for the International Registration of Marks was established under the Madrid Agreement in 1891 and further extended nearly 100 years later under the Madrid Protocol in 1989.

Administered by the International Bureau of WIPO located in Geneva, Switzerland, the system offers a simple, cost effective alternative to obtaining trademark registrations in other countries via what are known as “direct national filings”.

Note: There are some crucial differences between the Madrid Protocol and the Madrid Agreement, but (to keep it simple) this post treats the two systems as one.

1. International Trademark Protection in 3 Steps

The Madrid System operates as follows:

1. Register or (in some cases) apply to register a trademark in your home country
2. File a Madrid System application which designates the other member states in which you would like to obtain protection
3. Respond to any objections raised by overseas trademarks offices

In essence, the Madrid system allows a single application that is submitted to the International Bureau of the World Intellectual Property Office to be converted into trademark applications in each of the designated member states.

If the trademark office of a designated country does not refuse protection within 12 or 18 months (depending upon whether the Madrid Protocol or Agreement Applies), the mark is protected as if it had been registered as a trademark in that office.

2. Advantages of the Madrid Protocol and Madrid Agreement

Saving Money: This process is usually much simpler and therefore much less expensive than making separate applications in many national trade mark offices (usually engaging separate lawyers and attorneys) around the world.

Timeliness: As the various trade mark offices around the world are committed to notifying the International Bureau of objections within specific time frames (usually 12 to 18 months), the process is usually quicker than for direct national filings.

Overcoming Language Difficulties: Regardless of where you are applying to register your trademark, your application can be made in just one language instead of the language used by the individual countries in which you are seeking protection.

Simplifying Logistics: You don’t need to have an address for service in any foreign country (as you would normally need to do with direct national filings).

Easing of Ongoing Management: The subsequent management of your trade mark is much simpler because renewals of trademark registrations etc are all done at the same time. Changes to your trademark details (e.g. the owner’s name or address details) are simplified because the management of this information is also centralised.

Catering for Future Expansion: It is relatively easy to expand into additional countries once the Madrid System Application has been set up. Reduced filing fees apply to applications which simply involve adding designated countries to an existing Madrid System Application.

3. Other thoughts

In our practice, when advising clients on an international trademark protection strategy, the Madrid System is usually the first thing we consider.

Nevertheless, there are some disadvantages to using the Madrid System, and these will be discussed in an upcoming post.