Madrid Protocol

The Madrid Protocol is governed by the following two treaties:

Who Can Leverage on the Madrid Protocol?

An application for international registration (international application) may be filed only by a natural or legal person who has a connection with the Agreement or Protocol by reason of his establishment, domicile or nationality. An international application may be filed only if the mark has been registered in the trademark office of the Contracting Party with which the applicant has the necessary connection (known as the “office of origin”). However, where all designations are made under the Protocol (see below), the international application may be based solely on the application for registration filed with the office of origin. The international application must be filed with the International Bureau of WIPO through the office of origin.

International Applications

One or more of the Contracting Parties in respect of which protection is sought must be designated in the application for international registration. Further designations may be made subsequently. The designated Contracting Party must be a member of the same treaty as the Contracting Party whose office is the office of origin. The latter Contracting Party may not itself be designated in the international application. The designation of a particular Contracting Party may be made either under the Agreement or under the Protocol, depending on which treaty the Contracting Parties concerned are parties to. Where two Contracting Parties are members of both the Agreement and the Protocol, the designation will be governed by the Protocol. Irrespective of which treaty the international application is governed by, it may be filed in English, French or Spanish, unless the office of origin specifies that only one or two of these languages may be used. The filing of an international application is subject to the payment of a basic fee (reduced to 10% of the designated amount for international applications filed by applicants whose country of origin is a Least Developed Country (LDC) as determined by the United Nations); an additional fee for each category of goods and/or services other than the first three; and a complementary fee for each designated Contracting Party. However, a Contracting Party to the Protocol may declare that, where it is designated under the Protocol, the supplementary fee will be replaced by an individual fee, whose amount is determined by the Contracting Party concerned, but may not be higher than the fee payable for domestic trademark registration in its office.

International Registration

Upon receipt of an international application, the International Bureau examines it to determine whether it meets the requirements of the Agreement, the Protocol and the Common Regulations. This examination is limited to formalities, which includes the classification and comprehensibility of the list of goods and/or services. If there are no irregularities in the application, the International Bureau records the mark in the International Register, publishes the international registration in the WIPO Gazette of International Marks (hereafter referred to as “the Gazette”) and notifies each designated Contracting Party of the international registration. All material questions as to whether the mark is eligible for protection in a particular Contracting Party or whether it conflicts with an previously registered mark are determined by the trademark office of that Contracting Party in accordance with its applicable domestic legislation. The Gazette in its electronic form (e-Gazette) is available on the Madrid system website.

Statements Granting or Denying Protection

The office of each designated Contracting Party shall issue a statement of grant of protection under Rule 18ter of the Common Regulations. However, international registrations will be examined by designated Contracting Parties for compliance with their national laws, and if certain substantive requirements are not met, they are entitled to refuse the request for protection in their territory. Any such refusal, including a statement of the grounds for refusal, must be notified to the International Bureau, normally within 12 months from the date of notification. A Contracting Party to the Protocol may, however, declare that this period is extended to 18 months in respect of a designation made to it under the Protocol. A Contracting Party to the Protocol may also declare that a refusal based on an opposition may be communicated to the International Bureau even after this 18-month time limit. The refusal is communicated to the holder or the holder’s representative at the International Bureau, recorded in the International Register, and published in the Gazette. The procedure subsequent to a refusal (such as an appeal or a review) is conducted directly between the competent administrative authorities and/or the courts of the Contracting Party concerned and the holder, without the intervention of the International Bureau. However, the final decision concerning the refusal must be communicated to the International Bureau, which will record and publish it.

Effects of an International Registration

An international registration shall have the same effect in each designated Contracting Party from the date of the international registration as if the mark had been registered directly with the office of that Contracting Party. If no refusal is issued within the applicable time limit, or if the original notification of refusal is revoked by a Contracting Party, the mark shall enjoy the same protection from the date of the international registration as if it had been registered with the office of that Contracting Party. An international registration shall be valid for 10 years. It may be renewed further periods of 10 years on payment of the prescribed fees. Protection may be limited to some or all of the goods or services, or may be waived in respect of only some of the designated Contracting Parties. The transfer of the international registration may concern all or some of the designated Contracting Parties and all or some of the goods or services indicated.