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Madrid Protocol

From Wikipedia, the free encyclopedia
"Madrid Agreement" redirects here. For other uses, see Madrid Agreement (disambiguation).

For the Madrid Protocol relating to mining in the Antarctic, see Protocol on Environmental Protection to the Antarctic Treaty. For the great-power agreement over the Sulu Archipelago, see Madrid Protocol of 1885.

The Madrid System, also known as the Madrid Protocol[1] or simply Madrid, is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. It was established pursuant to the multilateral treaties Madrid Agreement Concerning the International Registration of Marks of 1891 and the Protocol Relating to the Madrid Agreement (1989), which has been the sole governing treaty since 2016.[2]

The Madrid System provides a centrally administered system for obtaining multiple trademark registrations in separate jurisdictions; it does not create a single unified registration across different jurisdictions, as in the case of the European Union trademark system.[3] Rather, applicants file a single international trademark application and pay one set of fees to apply for protection in any or all countries that are members of the system; each country has discretion to grant the application. Once the trademark authority of a designated country grants protection, the mark is protected in that jurisdiction just as if that office had registered it.[1]

The Madrid System is administered by the International Bureau of the United Nations World Intellectual Property Organization (WIPO) in Geneva, Switzerland. As of February 2023, the Madrid System consists of 114 members covering 130 countries;[4] known collectively as the Madrid Union, they represent more than 80% of world trade.[4]

History and development

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The Madrid system comprises two treaties; the Madrid Agreement Concerning the International Registration of Marks,[fn 1] which was concluded in 1891, and entered into force in 1892, and the Protocol Relating to the Madrid Agreement, which came into operation on 1 April 1996. The Madrid Agreement and Madrid Protocol were adopted at diplomatic conferences held in Madrid, Spain.

The Madrid Agreement was originally intended to provide for an international registration system, but did not achieve this for two significant reasons:

  • The lack of international acceptance. Many non-member countries, including the United Kingdom, the United States, and Central American, South American and Asian countries, such as Japan, were not adherents, which undermined recognition of the system as a truly "international" regime. Significantly, many of these countries represent the largest numbers of trademark filings and registrations in the world; and
  • The mere forwarding by the International Bureau of a uniform application to member countries, rather than the registration of the applicable trademark in the national trademark registers, precludes an actual "registration" system.

Some of the large trading nations like the United States, Japan, and Canada, which have a large number of filings at the national level, did not join the Madrid Agreement due to another perceived flaw in the system: if the home registration upon which an international registration was based came under 'central attack', the international registration would be cancelled or limited to the same extent that the home registration was cancelled or limited.

During 1966 and 1967, attempts were made to address this issue by establishing a new treaty that would reflect the need of the times rather than the world of the 1890s when the agreement was adopted. This led to the drafting of the Trademark Registration Treaty (TRT) which was adopted in Vienna in 1973, and entered into effect in 1980, with five contracting states, namely, Burkina Faso, Congo, Gabon, Soviet Union and Togo. In the absence of more accessions to the TRT and the low number of registrations since its inception, it was clear that the TRT was unlikely to supplant the Madrid Agreement.

As the realization of the introduction of a multi-jurisdictional (or at least pan-European) European Community Trade Mark (CTM) approached, the relevancy of the Madrid system came under scrutiny. Pressure increased on WIPO to maintain its relevance and strengthen the agreement by increasing membership, possibly through amendments. This culminated in the introduction of the Madrid Protocol, pursuant to which a CTM registration could be a 'foundation' or 'home' registration upon which an international registration could then be established. This mechanism is referred to as a "linking provision." The Protocol, after considerable lobbying efforts by WIPO, was signed by many countries, including most of the present members of the Madrid Agreement, and some countries that are members of the European Union, but were not members of the Madrid Agreement. The Protocol entered into force on 1 December 1995, and became operative on 1 April 1996.

Many countries have needed to modify or consider modifying their trademark laws in order to adhere to the Protocol, in addition to the modifications required by GATT-TRIPS/WTO.

In Europe, resistance to the Protocol was brought by trademark attorneys who were afraid of losing business because a Community Trade Mark application could be filed directly through the Madrid Protocol process.[5] In the United States, the proposal bogged down due to a trademark dispute between two businesses who were heavy campaign contributors to certain Congressmen, followed by a repeated reshuffling of the Senate due to elections and a subsequent defection of a Republican senator.[5] The treaty was eventually ratified during the presidency of George W. Bush.[4] With the accession of the U.S. and EU to the Madrid Protocol on 2 November 2003, and 1 October 2004, respectively, most major trading jurisdictions have joined the Madrid system.

On 31 July 2015, Algeria deposited its instrument of accession and acceded to the Madrid Protocol on 31 October 2015; as Algeria was the last member of the Madrid system to adhere to the protocol, the protocol became effective across the entire Madrid system.[6]

Members

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Map of the world showing Madrid Union membership status
Madrid Union members (green) and jurisdictions that are not members but are members of either OAPI or the EU (blue).

Adherence to the convention or the protocol includes membership of the "Madrid Union." As of June 2019, there are 104 members made out of 120 countries. The original treaty has 55 members, all of which are also party to the protocol (when Algeria joined the Madrid Protocol on 31 October 2015, all of the members of the Madrid Agreement were also members of the Madrid Protocol and many of the aspects of the Madrid Agreement ceased to have any practical effect). The term 'Madrid Union' can be used to describe those jurisdictions party to either the agreement or the protocol (or both).[7]

The protocol has been in operation since 1996 and has 100 members[4] making it more popular than the agreement, which has been in operation for more than 110 years and has 55 members.[7] The primary reason the protocol is more popular than the agreement is that the protocol introduced a number of changes to the Madrid system which significantly enhanced its usefulness to trademark owners.

For example, under the protocol it is possible to obtain an international registration based on a pending trademark application, so that a trademark owner can effectively apply for international registration concurrently, or immediately after, filing an application in a member jurisdiction. By comparison, the agreement requires that the trademark owner already holds an existing registration in a member jurisdiction, which may often take many months and sometimes years to obtain in the first place. In addition, the agreement does not provide the option to 'convert' international registrations which have been 'centrally attacked.'

Table of Madrid Union members with year of accession to the agreement and protocol, as applicable
Contracting party Agreement Protocol
 Afghanistan 2018
African Intellectual Property Organization (OAPI) 2015
 Albania 1995 2003
 Algeria 1972 2015
 Antigua and Barbuda 2000
 Armenia 1991 2000
 Australia 2001
 Austria 1909 1999
 Azerbaijan 1995 2007
 Bahrain 2005
 Belarus 1991 2002
 Belgium[a] 1892 1998
 Bhutan 2000 2000
 Bosnia and Herzegovina 1992 2009
 Botswana 2006
 Brazil 2019
 Brunei Darussalam 2017
 Bulgaria 1985 2001
 Cabo Verde 2022
 Cambodia 2015
 Canada 2019
 Chile 2022
 China[b] 1989 1995
 Colombia 2012
 Croatia 1991 2004
 Cuba 1989 1995
 Cyprus 2003 2003
 Czech Republic 1993 1996
 North Korea 1980 1996
 Denmark[c] 1996
 Egypt 1952 2009
 Estonia 1998
 Eswatini 1998 1998
 European Union[d] 2004
 Finland 1996
 France 1892 1997
 The Gambia 2015
 Georgia 1998
 Germany 1922 1996
 Ghana 2008
 Greece 2000
 Hungary 1909 1997
 Iceland 1997
 India 2013
 Indonesia 2018
 Iran 2003 2003
 Ireland 2001
 Israel 2010
 Italy 1894 2000
 Jamaica 2022
 Japan 2000
 Kazakhstan 1991 2010
 Kenya 1998 1998
 Kyrgyzstan 1991 2004
 Lao People's Democratic Republic 2016
 Latvia 1995 2000
 Lesotho 1999 1999
 Liberia 1995 2009
 Liechtenstein 1933 1998
 Lithuania 1997
 Luxembourg[a] 1924 1998
 Madagascar 2008
 Malawi 2018
 Malaysia 2019
 Mexico 2013
 Monaco 1956 1996
 Mongolia 1985 2001
 Montenegro 2006 2006
 Morocco 1917 1999
 Mozambique 1998 1998
 Namibia 2004 2004
 Netherlands[a][e] 1893 1998
 New Zealand[f] 2012
 North Macedonia 1991 2002
 Norway 1996
 Oman 2007
 Philippines 2012
 Poland 1991 1997
 Portugal 1893 1997
 South Korea 2003
 Republic of Moldova 1991 1997
 Romania 1920 1998
 Russian Federation 1976 1997
 Rwanda 2013
 Samoa 2019
 San Marino 1960 2007
 Sao Tome and Principe 2008
 Serbia 1992 1998
 Sierra Leone 1997 1999
 Singapore 2000
 Slovakia 1993 1997
 Slovenia 1991 1998
 Spain 1892 1995
 Sudan 1984 2010
 Sweden 1995
  Switzerland 1892 1997
 Syrian Arab Republic 2004
 Tajikistan 1991 2011
 Thailand 2017
 Trinidad and Tobago 2020
 Tunisia 2013
 Turkey 1999
 Turkmenistan 1999
 Ukraine 1991 2000
 United Kingdom[g] 1995
 United States of America 2003
 Uzbekistan 2006
 Vietnam 1949 2006
 Zambia 2001
 Zimbabwe 2015
  1. ^ a b c Benelux is considered one country for Madrid-system purposes.
  2. ^ Excluding Hong Kong and Macao.
  3. ^ Including Greenland and the Faroe Islands.
  4. ^ Malta is the only member state of the EU that is not also a member of the Madrid Union; an EUTM obtained via Madrid will cover Malta.
  5. ^ Including Curaçao, the Caribbean Netherlands, and Sint Maarten, which have registries independent of the unified Benelux office; excluding Aruba.
  6. ^ Excluding Tokelau.
  7. ^ Including the Isle of Man and (from 1 January 2021) Guernsey and Gibraltar; excluding other Crown Dependencies and British Overseas Territories.

Advantages

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The Madrid system provides a mechanism whereby a trademark owner who has an existing trademark application or registration (known as the 'basic application' or 'basic registration') in a member jurisdiction may obtain an 'international registration' for their trademark from the WIPO. The trademark owner may then extend the protection afforded to the international registration to one or more member jurisdictions, a process known as 'designation'. A useful feature of the Madrid system is that this protection may generally be extended to additional jurisdictions at any time, such that international trade mark protection can be extended to new jurisdictions which subsequently join Madrid, or to such other jurisdictions as the trade mark owner may choose.

In basic terms, the primary advantage of the Madrid system is that it allows a trademark owner to obtain trademark protection in any or all member states by filing one application in one jurisdiction with one set of fees, and make any changes (e.g. changes of name or address) and renew registration across all applicable jurisdictions through a single administrative process and the payment of a single fee.[8]

Disadvantages

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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. For example, if a basic application covers 'clothing, headgear and footwear,' and 'headgear' is then deleted from the basic application (for whatever reason), 'headgear' will also be deleted from the international application. Therefore, the protection afforded by the international registration in each designated member jurisdiction will extend only to 'clothing and footwear.' If the basic application is rejected as a whole, the international registration would also be totally refused.

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.[9]

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.[citation needed]

See also

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Notes

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  1. ^ The full name of the Madrid Agreement is the "Madrid Agreement Concerning the International Registration of Marks of April 14, 1891 (as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Nice on June 15, 1957, and at Stockholm on July 14, 1967, and as amended on September 28, 1979)".

References

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  1. ^ a b "Madrid Protocol". uspto.gov. United States: U.S. Patent and Trademark Office. Retrieved 23 May 2021.
  2. ^ World Intellectual Property Organisation (WIPO), ed. (2021). Guide to the International Registration of Marks under the Madrid Protocol. WIPO publication. Geneva, Switzerland: World Intellectual Property Organization (WIPO). ISBN 978-92-805-3250-0.
  3. ^ Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (Official Journal No. L78, 24.3.2009, p.1)
  4. ^ a b c d "Members of the Madrid Union". www.wipo.int. Retrieved 6 March 2023.
  5. ^ a b Report by the International Trademark Association, April 2003
  6. ^ Algeria Joins the Madrid Protocol, WIPO, 7 August 2015
  7. ^ a b "Madrid Agreement Concerning the International Registration of Mark and Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks – Status" (PDF). WIPO. 15 January 2020.
  8. ^ "Registering international trademarks under the Madrid System (Updated)". ABG IP. 20 October 2021. Retrieved 20 October 2021.
  9. ^ World Intellectual Property Organization
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