MADRID SYSTEM

FILMA VARGHESELegal Counsel – ALTACIT GLOBAL

MADRID SYSTEM

The Madrid System is a centrally administered system (by the International Bureau of the World Intellectual Property Organization, WIPO) for obtaining a bundle of trademark registrations in separate jurisdictions, creating in effect a basis for an "international registration" of marks.

MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS

Registration of trademarks in multiple jurisdictions around the world is governed by two independent treaties:

the Madrid Agreement (the Agreement) and the Madrid Protocol (the Protocol)

Together, the Agreement and the Protocol are known as the Madrid System. 

Contracting Parties: States party to the Agreement and/or the Protocol and organizations party to the Protocol are referred to collectively as Contracting Parties.

Madrid Union: Together (the Contracting Parties to the Agreement and the Protocol), they constitute the Madrid Union. (84 members)

THE MADRID AGREEMENT established in 1891 1900 - 1967: revised 6 times and amended once on

September 28, 1979 single and inexpensive international trademark registration to eliminate the need for filing, prosecuting or maintaining separate

registrations in multiple countries 56 members

FEATURES OF THE MADRID AGREEMENT Should be first registered at the national level in the country of origin.

The first registration is called “basic registration” International filing only through Office of origin to IB Country of origin has to be a member state “Central Attack” feature of the Agreement Complementary fees

PERCEIVED DEFECTS IN THE MADRID AGREEMENT

requirement for registration in the home country before protection of the mark could be awarded

unlimited risk of "central attack" to the mark a short examination period fees that are lower than the corresponding

fees in the home country's trademark offices limitations on assignability

THE MADRID PROTOCOL

was adopted in 1989 to correct the perceived deficiencies in the Agreement

Entry into force 1st Jan, 1995 Entered into operation on 1st April, 1996 to create a system of simple and inexpensive international

trademark registration 80 memberss

INNOVATIONS INTRODUCED BY MADRID PROTOCOL No need for “Basic registration” Facilitates priority claim Transforms an international registration into national

application - Remedies Central Attack Provision Individual fee system

DIFFERENCE BETWEEN MADRID AGREEMENT AND MADRID PROTOCOL

CERTAIN DIFFERENCES AGREEMENT PROTOCOL

Accession States States and IGOs

Basic mark Basic registration Basic application/registration

Languages French French/English/Spanish

Fee system BasicComplementarySupplementary

BasicComplementarySupplementary or Individual

Refusal period 12 months 12 months/18 months/18+ months

Dependency 5 years 5 years with possibility of transformation

Remedy to central attack No recourse for the owner of IR IR may be transformed into national application in each contracting party

Validity 20 years 10 years

Choice of office of origin Real or effective industrial or commercial establishment

Establishment, domicile or origin

THE MADRID SYSTEM

Membership Any party State to the Paris Convention for the Protection of Industrial Property An intergovernmental organization may become a party to the Protocol (but not

the Agreement) where these conditions are met:o at least one of the Member States of the organization is a party to the Paris

Convention and o the organization maintains a regional office for the purposes of registering

marks with effect in the territory of the organization. 

Overlapping membership To ease the possible confusion created by overlapping membership, WIPO

provides form MM2(E) for international application for the Protocol and form MM3(E) for those applications covered by both the Agreement and the Protocol.

 

PROCEDURE FOR AN INTERNATIONAL APPLICATION

Filing international application of trademark Check for minimum requirements by the Office of

Origin Certify the date of International Application and

conformity to the basic application/registration by the Office of Origin

Transfer of the International Application to the International Bureau by the Office of Origin

Formality check by the International Bureau Registration and Publication by the International

Bureau

FILING INTERNATIONAL APPLICATION- MINIMUM REQUIREMENTS

Applicant Basic Application/basic registration International application of trademark Safeguard clause Language Priority claimed Fees

Applicant- Who can file an International Application

In order to file an International trademark application via the Madrid System, the

applicant must be A national of or have a business establishment in one of the contracting

parties and Must hold a trademark application (Madrid Protocol) or registration

(Madrid Agreement) for the same trademark and goods/services in his own country (home application/registration).

Basic Application or Basic Registration

An international application of trademark must be based on a national

application/registration

International application of trademark

Filed in a prescribed form to the International Bureau (IB) through the Office of Origin.

Mark must be identical with that of the basic registration or basic application

Must provide list of the goods and/or services for which protection is sought

Must designate one or more Contracting Parties

Safeguard clause

Where both Contracting Parties are party to both the Agreement and the Protocol, the designation will be governed by the Agreement. This follows from the so-called ‘safeguard” clause in accordance with the Article 9sexies of the Madrid Protocol. However, according to the recent amendment to the Article 9sexies the Protocol will (as from 1st September 2008) apply between States bound by both the Agreement and Protocol.

Language There are three kinds of international application of trademark:

o The international application governed exclusively by the Agreement, i.e. all the designations are made under the Agreement;

o The IA governed exclusively by the Protocol, i.e. all the designation are made under the Protocol; and

o The IA governed by both the Agreement and the Protocol, i.e. some designations are made under the Agreement and some under the Protocol.

If the IA is governed exclusively by the Agreement, it must be in French. If it is governed exclusively by the Protocol or by both the Agreement and the Protocol, it may be in English, French or Spanish.

Priority claimed

Priority of an earlier filing may be claimed under Article 4 of the Paris Convention provided that such claim is requested and the date of the international

application is not later than six months after the earlier filing.

FeesThe international application is subject to the payment of the following fees:

Basic fee Supplementary fee for each class of goods/services beyond three classes Complementary fee for the designation of each designated Contracting

Party for which no individual fee is payable Individual fee for the designation of each designated Contracting Party

for which individual fee is payable.The required fees may be paid direct to the International Bureau or through the

Office of Origin if such office accepts to collect and forward such fees.

CHECK FOR MINIMUM REQUIREMENTS BY THE OFFICE OF ORIGIN

Preliminary check with regard to the applicant’s name; reproduction of the mark; color of mark; goods/services and designation, etc.

If any insufficiency, the Office of Origin will require the applicant to correct it.

The Office of Origin may also require the applicant to pay the national fee, at its own discretion, apart from the international fee that should be paid by the applicant to the International Bureau, directly or through the Office of Origin as prescribed in the legislation of each Contracting Party.

CERTIFY THE DATE OF INTERNATIONAL APPLICATION AND CONFORMITY TO THE BASIC APPLICATION/REGISTRATION BY THE OFFICE OF ORIGIN

The Office of Origin will certify that the particulars appearing in the international application correspond to the particulars appearing in the basic application or basic registration.

The Office of Origin will also certify the date on which it receives the International Application. o If the application reaches the International Bureau

within 2 months counted from the date of receipt by the Office of Origin, the International application date will be the date of receipt by the Office of origin.

o If the IB does not receive the document within 2 months as from the date of receipt by the Office of Origin, the date of the International application will be the date on which the IB receives the application.

TRANSFER OF THE INTERNATIONAL APPLICATION TO THE INTERNATIONAL BUREAU BY THE OFFICE OF ORIGIN

facsimile, ordinary mail, electronic means or telefacsimile

FORMALITY CHECK BY THE INTERNATIONAL BUREAU  

International Bureau determines whether the filing requirements are met The Office of Origin and the applicant are informed of any irregularities

that must be remedied within three months. Otherwise, the international application will be considered abandoned.

REGISTRATION AND PUBLICATION BY THE INTERNATIONAL BUREAU

  If the international application complies with the applicable requirements,

the mark is recorded in the International Register. The IB shall notify the international registration to the Office of the

designated Contracting Parties and inform the Office of Origin accordingly and send a certificate to the holder.

ADVANTAGES OF THE MADRID SYSTEM

One application In one place One set of documents One fee One language No legalization necessary Resulting in one registration with one registration number

and term Covering many countries Subsequent designations possible One renewal date /only one renewal application necessary Simplified recordal of assignments, name changes, licenses,

etc Filing under the Madrid is less time consuming

DISADVANTAGES OF MADRID SYSTEM

Expensive (if more than a very limited number of countries)

IR dependent on the basic mark for 5 years Central attack – Possibilities of opposition or infringement

actions in the country of origin Specification of goods and services – If the National Office

is rigorousFor instance, if a basic application covers “Agricultural, horticultural and forestry products” and “forestry products” is deleted for whatever reason, the international registration will only cover “Agricultural and horticultural products”. The protection afforded by the IR in each designated member country will, therefore. Only extend to “Agricultural and horticultural products”.

INDIA AND MADRID SYSTEM

India is realizing the advantages of becoming a member of the Madrid system

Existing TM laws are territorial in nature and have no international application

CONCLUSION

The phrase “international registration” is not a registration in the same sense as a national trademark registration in any Contracting Parties. Instead, the holder of an international registration gains the right to apply for registration in Contracting Parties. This right survives even if a designated Contracting Party refuses registration.

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