Trademark protection is generally territorial in
nature. This means that trademark protection has to be sought under
different jurisdictions to obtain protection under those
jurisdictions. In order to obviate practical difficulties and
hardships during such trademark application at international level,
Madrid Agreement and Madrid Protocol have been adopted by the
international community. The Madrid Protocol was adopted to render
the Madrid system more flexible and more compatible with the domestic
legislations of certain countries which had not been able to accede
to the Madrid Agreement.
The Madrid Agreement and Protocol are open to any
State which is party to the Paris Convention for the Protection of
Industrial Property. The two treaties are parallel and independent
and States may adhere to either of them or to both. In addition, an
intergovernmental organisation which maintains its own Office for the
registration of marks may become party to the Protocol. Instruments
of ratification or accession must be deposited with the Director
General of WIPO. States and organisations which are party to the
Madrid system are collectively referred to as Contracting Parties.
The system makes it possible to protect a mark in a
large number of countries by obtaining an international registration
which has effect in each of the Contracting Parties that has been
designated.
An application for international registration
(international application) may be filed only by a natural person or
legal entity having a connection, through establishment, domicile or
nationality, with a Contracting Party to the Agreement or the
Protocol.
A mark may be the subject of an international
application only if it 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 necessary connections. However,
where all the designations are effected under the Protocol the
international application may be based on a mere application for
registration filed with the Office of origin. An international
application must be presented to the International Bureau of WIPO
through the intermediary of the Office of origin.
An application for international registration must
designate one or more Contracting Parties where protection is sought.
Further designations can be effected subsequently. A Contracting
Party may be designated only if it is party to the same treaty as the
Contracting Party whose Office is the Office of origin. The latter
cannot itself be designated in the international application.
The designation of a given Contracting Party is made
either under the Agreement or under the Protocol, depending on which
treaty is common to the Contracting Parties concerned. If both
Contracting Parties are party to both the Agreement and the Protocol,
the designation will be governed by the Agreement, in accordance with
the so-called “safeguard clause” (Article 9sexies of the
Protocol).
Where all the designations are effected under the
Agreement the international application, and any other subsequent
communication, must be in French. Where at least one designation is
effected under the Protocol, the applicant has the option of English,
French or Spanish, unless the Office of origin restricts this
choice to one of these.
The filing of an international application is
subject to the payment of a basic fee (which is reduced to 10% of the
prescribed amount for international applications filed by applicants
whose country of origin is a Least Developed Country (LDC), in
accordance with the list established by the United Nations), a
supplementary fee for each class of goods and/or services beyond the
first three classes, and a complementary fee for each Contracting
Party designated. However, a Contracting Party to the Protocol may
declare that when it is designated under the Protocol, the
complementary fee is to be replaced by an individual fee, whose
amount is determined by the Contracting Party concerned but may not
be higher than the amount which would be payable for the registration
of a mark with its Office.
Once the International Bureau receives the
international application, it carries out an examination for
compliance with the requirements of the Agreement, the Protocol, and
their Common Regulations. This examination is restricted to
formalities, including the classification and comprehensibility of
the list of goods and/or services; any matter of substance, such as
whether the mark qualifies for protection or whether it is in
conflict with an earlier mark, is left to each designated Contracting
Party to determine. If there are no irregularities, the International
Bureau records the mark in the International Register, publishes the
international registration in the WIPO Gazette of International
Marks, and notifies it to each designated Contracting Party.
These Contracting Parties may examine the
international registration for compliance with their domestic
legislation and, if some substantive provisions are not complied
with, they have the right to refuse protection in their territory.
Any such refusal, including the indication of the grounds on which it
is based, must be communicated to the International Bureau, normally
within 12 months from the date of the notification. However, a
Contracting Party to the Protocol may declare that, when it is
designated under the Protocol, this time limit is extended to 18
months. Such a Contracting Party may also declare that a refusal
based on an opposition may be communicated to the International
Bureau even after this time limit of 18 months.
The refusal is communicated to the holder, recorded
in the International Register and published in the Gazette. The
procedure subsequent to a refusal (such as an appeal or a review) is
carried out directly between the administration or court of the
Contracting Party concerned and the holder, without any involvement
of the International Bureau. The final decision concerning the
refusal must, however, be communicated to the International Bureau,
which records and publishes it.
The effects of an international registration in each
designated Contracting Party are, as from the date of the
international registration, the same as if the mark had been
deposited directly with the Office of that Contracting Party. If no
refusal is issued within the applicable time limit, or if a refusal
originally notified by a Contracting Party is subsequently withdrawn,
the protection of the mark in question is, from the date of the
international registration, the same as if it had been registered by
the Office of that
Protection may be limited with regard to some or all
of the goods or services or may be renounced with regard to only some
of the designated Contracting Parties. An international registration
may be transferred in relation to all or some of the designated
Contracting Parties and all or some goods or services.
The system of international registration of marks
has several advantages for trademark owners. Instead of filing many
national applications in all countries of interest, in several
different languages, in accordance with different national procedural
rules and regulations and paying several different (and often higher)
fees, an international registration may be obtained by simply filing
one application with the International Bureau (through the Office of
the home country), in one language (either English or French) and
paying only one set of fees.
Similar advantages exist when the registration has
to be renewed; this involves the simple payment of the necessary
fees, every 10 years, to the International Bureau. Likewise, if the
international registration is assigned to a third party or any other
change, such as a change in name and/or address, has occurred, this
may be recorded with effect for all the designated Contracting
Parties by means of a single procedural step.
One disadvantage of the Madrid system is that any
refusal, withdrawal or cancellation of the basic application or basic
registration within five years of the registration date of the
international registration will lead to the refusal, withdrawal or
cancellation of the international registration to the same extent.
The process of attacking the basic application or
basic registration for this purpose is generally known as “central
attack”. Under the Madrid Protocol, the effects of a successful
central attack can be mitigated by transforming the international
registration into a series of applications in each jurisdiction
designated by the international registration, a process known as
“transformation”. Although transformation is an expensive option
of last resort, the resulting applications will receive the
registration date of the international registration as their filing
date.
In 1997, less than half of a percent of
international registrations were canceled as a result of central
attack. The cost savings which usually result from using the Madrid
system may be negated by the requirement to use local agents in the
applicable jurisdiction if any problems arise.
