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MADRID PROTOCOL - THE BASICS

MADRID PROTOCOL - THE BASICS

The Madrid Protocol is an international system for obtaining trade mark protection for a number of countries and/or regions using a single application. Protection (an “International Registration”) can only be obtained for countries and regions which have joined the system (member countries), and these are listed below.

International Registrations give a bundle of rights administered centrally via the World Intellectual Property Organisation (WIPO) in Switzerland.

Member Regions

In addition to many individual countries, there are three regions which can be designated in an International Registration under the Madrid Protocol.

One is Benelux: this comprises Belgium, The Netherlands and Luxembourg; they are in effect treated as one country – it is not possible to designate them separately.

Another is the European Union (EU): all member states of the European Union (with Benelux treated as one – see above), except for Malta (which is not currently in the International Registration System), can be designated separately, in addition or as an alternative.

The third is the African Intellectual Property Organization (OAPI); please see below for list of the member countries.

Note that it is not possible to designate the member countries of OAPI  separately; nor is it possible to file stand alone national applications in the member countries as they have decided that trade mark protection will only be through the OAPI.

Who can apply?

Any UK company, or any UK national, may apply if they have a UK or European Union Trade Mark (EUTM)1 application or registration. Others may be able to apply, if they have a connection with a member country/region and have a trade mark application or registration for that country or region.

Home Application/Registration

As a United Kingdom trade mark application is examined in general quite rapidly, it is probably worthwhile waiting for grant to occur before filing an International Madrid Protocol Application based on it, so that any problems arising during application will have been dealt with.

An existing UK or European Union Trade Mark registration can be used as the basis for an International Registration.

It is possible to base an International Registration on more than one UK application/registration or more than one EUTM application/registration for the same mark, but not a mixture of UK and EUTMs.

What are the advantages?

  • The cost will almost certainly be less than applying separately for registration for each member country/region. However, the costs depend on various factors, including the countries/regions designated, and we will be happy to provide an estimate after discussing your requirements.
  • We can handle the application procedure for all countries/regions unless objections arise (as mentioned below). This leads to a further cost saving as we do not generally need to instruct local attorneys.
  • Protection for some countries/regions may be obtained more quickly than by using the national route. This is because strict time limits are set under the Protocol.
  • Recordal of changes of name and assignments etc. (and, for some countries/regions, licenses) is carried out centrally via WIPO. There is thus a cost saving compared with having to record such events separately in each member country/region.
  • An International Registration can replace a corresponding national/regional registration without loss of rights.
  • It is usually possible to add extra countries/regions later though these will have their own, later, date.

What can be applied for?

Almost any mark that would be acceptable in the member countries can be applied for. The International Application can include as many classes of goods/services as the home application or registration. It cannot include items that are outside the scope of the goods/services of the home application or registration. Within these parameters, it is possible to have different specifications of goods/services for different designations. For example, the United States will normally require a specification which is more specific than the generally worded specifications which are acceptable for most countries/regions.

How do I apply?

We can of course handle the application procedure for you.

In brief, the application (“International Application”) has to be filed at the Trade Mark Office of the applicant’s home country/region (“The Office of Origin”), corresponding to the “home” application or registration upon which the International Application is based.

The Office of Origin checks the details of the applicant’s home application or registration and forwards the application to the World Intellectual Property Organisation.

The application can be filed in either English, French or Spanish and can designate any number of the member countries/regions (except the applicant’s home country/region, as this is covered by the applicant’s home application or registration on which the application for International Registration is based).

Examination by WIPO

Only a formalities examination is carried out by WIPO. If there are no issues, an International Registration will be registered and details sent to each of the offices of the designated member countries/regions listed in the International Application. Note that registration of the International Registration by the International Bureau does not in itself give protection in the designated countries/regions.

Examination by designated member countries/regions

The offices for the designated member countries/regions each examine the International Registration. They can refuse to accept the registration for their country (or region) in whole or in part on a number of grounds such as:

  1. it would conflict with existing rights (in some countries/regions refusal on this ground occurs only if a third party successfully objects);
  2. it is not distinctive;
  3. it is contrary to morality or public order;
  4. it is likely to cause deception.

There can also be queries regarding the list of products/services.

The designated member countries/regions have a period of either 12 or 18 months from being informed of the designation by WIPO in which to notify refusal to the International Bureau or else to issue a statement of grant of protection. The 18 month period may be extended where an opposition is filed against the relevant designation.

If objections or oppositions arise and are to be responded to, then local trade mark attorneys in general have to be appointed if the objections are to be contested; where objections or oppositions arise to the designation of the European Union we, as European Trade Mark Attorneys, can handle these.

Enforceability in various countries

We are aware that some countries and regions (in particular OAPI, Ghana, Liberia, Namibia, Sierra Leone, Swaziland, Zambia and Zimbabwe) have not yet enacted domestic legislation so as to explicitly provide protection for marks designated under the International Registration system. It is therefore doubtful that designations will be enforceable in these countries.

Also although designations of Egypt in International Registrations have been recognized there for many years, no provision is made for them in their domestic law, and so there is some slight doubt as to their enforceability.

Note also that the status of a European Union Trade Mark and consequently a European Union designation under Gibraltarian law is not absolutely clear; there are conflicting views on this point.

Assignments & Licensing

It is possible to assign an International Registration either partially or totally, including splitting it by designated countries/regions. The assignment can only be recorded if the new owner belongs to, or has a connection with, a member country/region. If this does not apply, the assignment cannot be recorded and the International Registration, or the part being assigned, remains in the name of the old owner.

Since April 2002 it has been possible to record licences centrally through WIPO in respect of some countries/regions. However some countries have issued declarations that applications to record licences must be made through the national/regional office concerned – these countries are indicated L in the list of countries at the end of this page.

The national laws of some countries do not provide for the recordal of licences and these countries have issued declarations that such recordals made at WIPO are without effect – these countries are indicated N, however it is not obligatory for such a declaration to be made.

What are the disadvantages of International Registrations?

  • If within five years from the date of the International Registration the applicant’s home application or registration ceases to have effect either in whole or in part, then the International Registration will be cancelled to the same extent.
  • If this situation arises, then it is possible to file national/regional applications having the same coverage, claiming a date back to that of the International Registration. The total costs will then be rather greater than had the national/regional applications been filed in the first place.
  • It may be some time before it can definitely be assumed that protection exists in a country/region, because some countries/regions still do not advise that they have accepted a designation and so it has to be assumed that it is protected if the relevant time for advising of refusal has expired and no refusal has been advised.

Madrid Agreement

The Madrid Protocol is, in effect, an updated version of a system called the Madrid Agreement, which started over a century ago.  As from 31 October 2015 all the members of the Madrid Agreement are also members of the Madrid Protocol; as the Protocol takes precedence over the Agreement, the Protocol now governs all international applications and registrations. The Agreement is in effect redundant – no operations under the Agreement are now conducted.

Seeking Trade Mark Protection for the European Union

All the countries in the European Union (EU) except for Malta belong to the Madrid Protocol; leaving aside Malta this gives a choice of four routes of protection for the EU:

  • national applications;
  • a directly filed European Union Trade Mark application;
  • the designation of the European Union in an International Application;
  • the designation of the individual European Union countries in an International Application.

The European Union Intellectual Property Office2 treats the designation of the EU somewhat differently to applications submitted directly to them; please see our separate page for details.

A particular advantage of designating the EU (over a directly filed European Union Trade Mark) is that if the designation of the EU is withdrawn, refused or ceased to have effect (as opposed to the International Registration as a whole), that designation can be converted into subsequent designations of EU member states (except for Malta, and with Benelux counting as one) which should give substantial cost savings over the other option, conversion to national applications, which is the only option for directly filed European Union Trade Mark applications and registrations.

There are various other advantages and disadvantages to the various routes: please see our page Trade Marks: What Route to Protection? for further information.

The Future

As Colombia and Mexico have joined the Madrid Protocol, and as applications can be filed in Spanish, it is likely that further countries, especially those in Central and South America, most of which are Spanish-speaking, will sign up. Canada is in the process of amending its trade mark legislation so that it will be able to join the Madrid Protocol. This is not expected to happen before 2018.

1 previously known as a Community Trade Mark (CTM)
2 previously known as the Office for Harmonization in the Internal Market (OHIM)

Member countries and regions (at 6 January 2017)

The member countries of the Madrid Protocol are:

African Intellectual Property Organization (OAPI)1L Liberia*
Albania
Liechtenstein
Algeria LithuaniaE
Antigua & Barbuda
Macedonia
Armenia
Madagascar
AustraliaN MexicoL
AustriaE MoldovaL
Azerbaijan
Monaco
Bahrain
Mongolia
Belarus
Montenegro
Benelux2E Morocco
Bhutan  Mozambique 
Bonaire, Saint Eustatius and Saba3 Namibia* 
Bosnia and Herzegovina New Zealand9N
Botswana
North Korea
Brunei Darussalam Norway
BulgariaE Oman
CambodiaL Philippines
China4L PolandE
ColombiaL
PortugalE
CroatiaE RomaniaE
Cuba
Russian FederationL
Curaçao3 Rwanda
Cyprus5E San Marino
Czech RepublicE São Tomé and Principe
Denmark6E Serbia
Egypt*
Sierra Leone*
EstoniaE SingaporeL
European Union7 Sint Maarten3
FinlandE SlovakiaE
France8E SloveniaE
GambiaL South KoreaL
GeorgiaL SpainE
GermanyEN Sudan
Ghana* Swaziland*
GreeceEL SwedenE
HungaryE Switzerland
Iceland
Syria 
IndiaL
Tajikistan
Iran Tunisia
IrelandE Turkey
Israel  Turkmenistan
ItalyE Ukraine
JapanL
United Kingdom10E
Kazakhstan
United States of America
Kenya Uzbekistan
KyrgyzstanL Vietnam
LaosL Zambia
LatviaE Zimbabwe*
Lesotho

1)  Official name: Organisation Africaine de la Propriété Intellectuelle. Its members are Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, The Republic of Congo, Côte d’Ivoire, Gabon Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Biaasu, Senegal and Togo.
2) i.e. Belgium, The Netherlands and Luxembourg – which are designated as one “member country”.
3)  Constituent territories of the Netherlands Antilles until it was dissolved in October 2010.
4)  Excluding Hong Kong and Macau.
5)  Only effective in Southern (Greek) Cyprus because of the political situation in that country.
6)  Covers Greenland as regards International Registrations and subsequent designations dated 11 January 2011 or later. Covers the Faroe Islands, as regards International Registrations and subsequent designations dated 13 April 2016 or later.
7)  Automatically covers Jersey and also some (but not all) overseas territories of European Union countries. There are conflicting views on whether a EUTM automatically covers Gibraltar and whether an EU designation can be re-registered in Gibraltar and if it provides protection. Does not cover Northern Cyprus.
8)  Including all Overseas Departments and Territories.
9)  Does not currently include Tokelau.
10)  Also covers the Isle of Man, Jersey and the Falkland Islands.
E)  European Union Member.
L)  Local recordal of licences.
N)  Recordal of licences has no effect.
*)  See section regarding enforceability in various countries.

This information is simplified and must not be taken as a definitive statement of the law or practice.

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