IPR-of Marksand the Protocol Relating to that Agreement ()
WIPO gives an overview of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“the Protocol”), which was adopted in 1989, entered into force on December 1, 1995, and went into effect on April 1, 1996. This treaty was ratified at a Diplomatic Conference in Madrid, Spain. The scheme for international trademark registration is known as "the Madrid Agreement”. The system of international registration of marks is governed by two treaties: The Madrid Agreement, concluded in 1891 and revised at Brussels (1900), Washington (1911), The Hague (1925), London (1934), Nice (1957), and Stockholm (1967), and amended in 1979, as well as the Protocol relating to that Agreement, which was signed in 1989, with the intention of making the Madrid framework more versatile and compliant with the domestic laws of those countries that were unable to join the Agreement. The Madrid Agreement and Protocol are open to any country that has signed the Paris Convention for the Protection of Industrial Land. The two treaties are parallel and separate, and states may ratify one or both. Furthermore, an intergovernmental entity with its own Office for the registration of trademarks may become a party to the Protocol. Ratification or accession instruments must be deposited with the Director General of WIPO. Contracting Parties are states and organisations that have joined the Madrid scheme. The system allows for the protection of a mark in a large number of countries by obtaining an international register that has effect in each of the Contracting Parties that has been selected.Who may use the system?An application for international registration (international application) can be submitted only by a natural person or legal entity with a relation to a Contracting Party to the Agreement or the Protocol by creation, domicile, or nationality. Only a mark that has already been registered with the Trademark Office (referred to as the Office of origin) of the Contracting Party with which the applicant has the requisite relations may be the subject of a foreign application. However, where all designations are made under the Protocol,the foreign application can be based solely on a registration application. An international application must be sent to WIPO's International Bureau through the Office of origin's intermediary.An application for international registration must clarify which Contracting Parties are to be covered. Additional designations can be made later. A Contracting Party may be named only if it is a signatory to the same treaty as the Contracting Party whose Office is the origin of the designation. In the foreign application, the latter cannot be named. The identification of a particular Contracting Party is made under either the Agreement or the Protocol, depending on which treaty is shared by the Contracting Parties. If all Contracting Parties are signatories to both the Agreement and the Protocol, the designation would be controlled by the Agreement, in compliance with the so-called "safeguard clause." The foreign application, as well as any subsequent correspondence, must be in French where all designations are made under the Agreement. If at least one designation is made under the Protocol, the applicant can choose between English and French, unless the Office of Origin limits this choice to one of these.THE MADRID SYSTEM: BASIC FEATURESThe Madrid System of international registration of marks is administered by the International Bureau of the World Intellectual Property Organization (WIPO) The Madrid System was governed by the Madrid Agreement Concerning the International Registration of Marks, which was adopted in 1891. The Agreement is now inoperative and the Protocol is the sole governing treaty under the Madrid System. The Madrid Union is a Special Union under Article 19 of the Paris Convention for the Protection of Industrial Property. Every member of the Madrid EU is a member of its Assembly. Among the most important tasks of the Assembly are the adoption of the program and budget of the Union and the adoption and modification of the implementing regulations, including fixing of fees connected with the use of the system.Who May Use the System?The Madrid System may be used only by a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, a country which is party to the Protocol. A mark may be the subject of an international registration, if it has been registered, or if its registration has been applied for in the Office of origin. It cannot be used by a person or entity which does not have the necessary connection, through establishment, domicile or nationality, with a member of the Madrid Union. It can't be used to protect a trademark outside the Madrid EU.Brief Description of the SystemAn application for international registration must be presented to the International Bureau through the Office of origin. Each designated Contracting Party has the right to refuse protection, within the time limits specified in the Protocol. For a period of five years from the date of its registration, an international registration remains dependent on the mark registered or applied for in the Office at the origin. After the expiry of this period, the international registration becomes independent of the basic registration or basic application. An international registration may be maintained in force indefinitely by the payment, every 10 years, of the
prescribed fees.Advantages of the System
International registration has several advantages for the owner of the mark. Owners of marks have to file only one application in one language (English, French or Spanish) Owners pay fees to one Office instead of filing separately in the trademark Offices of the various Contracting Parties in different languages. Part of the fees collected by the International Bureau is transferred to the Contracting Party in which protection is sought. If the International Registration Service closes its biennial accounts with a profit, the proceeds may be divided among the Contracted Parties. The advantages for trademark owners consist of the simplicity of the international registration system and the financial savings made when obtaining and maintaining the protection of their marks.