There is a reason why international trademark protection via the Madrid Protocol System is often called the “Easiest way to trademark internationally.” It provides trademark owners the opportunity to apply for trademark registration in multiple countries at the same time and enjoy subsequent management of their marks from a single, centralised location.
In this blog, we will discuss what the Madrid Protocol System is, how to use it to protect your trademark, and who can apply for international trademark registration through this system. Read further to unlock all the information you need to know about international trademark protection and filing via the Madrid Protocol.
What is the Madrid System?
The Madrid Protocol System is an international trademark registration system provided by the World Intellectual Property Organization (WIPO), which is used by individual entrepreneurs, small and medium-sized enterprises (SMEs), and large multinational corporations to register and maintain their trademarks in multiple countries. The system is overseen by the Madrid Union Assembly and the Working Group, which meet annually to discuss new developments and potential improvements.
Users of the system can access distance learning courses to learn more about trademarks and the system. Additionally, there are podcasts and video tutorials available to learn about the history of the system and how to use its services. All these tools help individuals understand the benefits of using the Madrid Protocol System and make informed decisions regarding international trademark registration.
The Madrid Protocol Member Regions
The Madrid Protocol system is an international agreement governing the registration of trademarks in multiple countries and regions. It was adopted by the International Intellectual Property Organisation (IIP) in 2006. The protocol is composed of three regions – Benelux, the European Union and the African Intellectual Property Organisation (OAPI). Each member state can be designated separately or as an alternative.
The Benelux region comprises Belgium, The Netherlands, and Luxembourg. It is treated as one country for trademark registration purposes.
Members of the international registration system can designate individual countries for trademark registration or use the alternative designation ‘Benelux’. In this case, the application will only be examined by the trademark office of a member state that has been designated.
The European Union countries can be designated separately or as an alternative to the Benelux countries. Malta is not included in the international registration system under the protocol.
How to use the Madrid System
The Madrid Protocol System, established in 1891, is a trademark filing agreement between member countries of the World Intellectual Property Organization (WIPO). It allows trademark owners to apply for trademark protection in with subsequent designation in several countries by filing one application directly with the trademark office of their choice. This streamlined process can save valuable time and money for trademark owners.
The application fees vary from country to country, but the cost of filing a single application is usually around £300 to £1,000. The fees depend on the size of the mark and its registration status. Additionally, trademark offices can charge additional fees for services such as filing an extension request or issuing a search report.
It is important to note that the Madrid Protocol System doesn’t guarantee international protection of trademarks through any particular trademark office. For example, if an office grants international registration of a trademark but subsequently cancels it under local law, the owner would not be able to reclaim the registration fee paid under the Madrid System. Thus, it is best to conduct due diligence research before filing an application under the Madrid System.
Searching for protected trademarks
The Madrid Protocol System is a convenient and cost-effective way of registering and managing trademarks worldwide. It offers trademark owners the opportunity to register and protect their mark in up to 130 countries through a single application fee. The system works by allowing trademark owners to file a single application to the Madrid Madrid Office in the country where they have a domicile, real and effective industrial or commercial establishment, or are national. This makes it easier for trademark owners to manage their rights globally.
Before filing an international application, applicants must first file a national application or registration of the mark in the home country. This helps ensure that applicants have legal rights to their trademark in the country where they filed the application. Once international protection is sought, applicants can choose from one of several classes of goods and services for which fees vary depending on the number of classes being protected. This system allows trademark owners to protect their intellectual property globally without paying multiple fees or fees for multiple classes of goods and services.
Filing an international trademark application
The Madrid Protocol System is an international registration system for trademark applications. It allows trademark owners to protect their marks globally under one consistent system. The Madrid Protocol system is a treaty-based international registration system that allows trademark owners to protect their marks globally under one consistent system. To be able to protect a trademark outside of the Madrid Union, a national application or registration must first be filed before filing for international protection using the Madrid system. The Madrid protocol system governs the international registration of marks under the Madrid Agreement and the Protocol relating to the Madrid Agreement. It provides trademark owners with stability and legal protection worldwide.
The application must designate one or more Contracting Parties in which the mark is to be protected. Once an application has been submitted, it can be amended to include further Contracting Parties after the original application for registration has been submitted. This allows trademark owners to protect their trademarks globally without the need to re-file an application in multiple jurisdictions.
Managing your international trademark registrations
The Madrid Protocol System ensures the registration and management of trademarks across countries with a single application and set of fees. It streamlines the international trademark application process, making it faster and easier for trademark owners to protect their intellectual property globally. To use the Madrid System, you will need to have a national application/registration in your home country before filing an international registration.
This system allows trademark owners to protect their intellectual property globally without facing multiple fees or requiring additional paperwork. Before using the Madrid Protocol System, consider the potential sale of your business and the number of jurisdictions in which you wish to seek protection. Additionally, be sure to consider the sale of your business and the number of jurisdictions in which you wish to seek protection before using the Madrid Protocol System.
The fees for the Madrid Protocol System should be calculated using the World Intellectual Property Organisation’s (WIPO) Online Fee Calculator. The fees can vary depending on the application type and the designated jurisdiction. For example, individual fees are required for the designation of Canada. Other fees may apply, such as a fee to cover the cost of international registration services. Fees are displayed in Swiss Francs (CHF) and the exact amount due is dependant on the conversion rate used on the day the application is filed.
In order to pay fees for the Madrid Protocol System, payment can be made through credit cards or bank accounts with supported international payment methods such as Visa and MasterCard credit or debit cards.
The Madrid Protocol System is the world’s most widely used international trademark registration system. As of December 31, 2019, there were 12,889 international trademark applications filed under the Madrid Protocol System. This represents an 8% increase from 2018 when 11,901 applications were filed.
The top 5 countries of origin for international trademark applications filed in 2019 were:
- United States of America
The top 5 countries of destination for international trademark applications filed in 2019 were:
- United States of America
- European Union Intellectual Property Office (EUIPO)
- Japan Patent Office (JPO)
- Republic of Korea
As of December 31, 2019, there were 646 international trade mark registration systems in force. This is an increase from the previous year when there were 628 in force.
The Madrid Protocol System offers many benefits for users, including:
- A single application can be filed to protect a trade mark in multiple countries or regions
- The application process is standardised and streamlined, making it simpler and faster than filing national applications
- Fees are lower than filing multiple national applications
- International registrations can be renewed centrally through WIPO
Who can apply via the Madrid Protocol?
- The Madrid Protocol is an international trade mark system for designated countries and regions that have joined the system.
- To be eligible to register trademarks under the Madrid Protocol system, individuals or companies in the must submit a trade mark application to the office of intellectual property of their home country via national trade mark registration.
- Home countries must have filed a basic application with their trade mark office, such as the United States Patent and Trade mark Office (USPTO).
- In addition to your trade mark application and fees, you may also need to file additional paperwork with the office of intellectual property of your home country.
- The Madrid protocol is primarily used by individuals and businesses seeking trade mark protection abroad. It offers international registration and protection for trademarks in countries that have joined the protocol.
- There are several benefits of trademark protection under the Madrid protocol, including protection of your trademark abroad from unauthorised use, litigation, and dilution.
Home countries are required to provide registration protection for trademarks registered through the protocol, but there are some limitations on registration scope.
As of now, the World Trade Organization (WTO) doesn’t recognise member states’ participation in this system as legal evidence that its goods and services are protected by international registration rights.
What are the advantages?
The Madrid Protocol system provides corporations with cost savings for trademark registration on a global scale. The protocol has almost 100 contracting parties, with membership spanning Western Europe, Eastern Europe, Africa/Middle East, and Asia/Pacific regions such as India and Malaysia. This allows trademark owners to extend their trademark protection globally without the need for multiple applications or fees.
The Madrid Protocol system also offers an easier renewal system for trademark registration. In the past, if a corporation wanted to renew its trademark registration in multiple countries, it had to file Renewal Applications in each individual country. With the Madrid Protocol, there is now a single application that can be filed with WIPO which will automatically renew the registration in all of the member countries.
Another advantage of the protocol is uniformity among member states’ laws and procedures related to international trademarks. This increases predictability and legal certainty for companies seeking protection in multiple jurisdictions. Additionally, because international registrations are granted equal treatment to national registrations, trademark owners can take advantage of the priority date of their international registration when applying for protection in individual countries.
The Madrid Agreement is a system of international intellectual property protection that was established in the early 20th century and replaced the older Paris Convention of 1883. The Madrid Protocol, which governs international applications and registrations under the Madrid Agreement, came into force in 2015. A Contracting Party to the protocol is any country or organisation that is a part of the agreement.
As of now, it includes almost 200 member states. The protocol supersedes the Madrid Agreement and governs all international applications and registrations under the new agreement. However, not all countries are Parties to the protocol; only those with a substantial intellectual property (IP) industry are eligible to apply.
Frequently Asked Questions
What did the Madrid Protocol do?
The Madrid Protocol streamlines the process of trademark registration for corporations seeking protection in multiple countries. By submitting a single application to the local trademark office of the desired country, companies can save time and money.
Is the Madrid System right for you?
The Madrid System can be a great option for companies looking to cost-effectively register trademark rights in countries that are signed up to the protocol, but there are certain factors to consider before beginning the application process.
Firstly, it is important to determine how many countries you would like to designate as part of your registration. If you’re only interested in one or two countries then it may be easier and cheaper to file national applications instead of using the system. Secondly, the protocol’s requirements may be stricter than those of the national application process so make sure to read up on the rules of international registration.
As a last note, if you’re unfamiliar with how to perform transactions with the system, video tutorials are available which can help users understand the system step by step.
In short, the Madrid Protocol is a system that allows you to register your international trademark in countries that are signatories to the agreement. The process allows applicants to file an international application with a single filing office (an application of international registration) and have the application transmitted to member states for registration. It also allows applicants to secure a date of filing, which can be used as evidence of prior use of the trademark if the applicant opts for opposition proceedings in member states.
Further, it allows applicants to secure a single international application filing date for all member states and protect their rights in individual countries by way of subsequent national applications. If you’re looking to expand your business globally and want to protect your brand across multiple countries, the Madrid system can help you do that easily and cost-effectively. Get a free consultation today!
Written by Ellis Sweetenham – Senior Intellectual Property Law Consultant
After achieving a First Class LLB Law degree from Southampton Solent University in 2016, Ellis went on to complete an LPC LLM in Legal Practice in 2017 at the University of Law. Following her training, Ellis was admitted to the roll as a Solicitor in February 2019.
As part of her role as a Senior Intellectual Property Law Consultant, Ellis manages the team, and is there to advise all clients on any area of trade mark law. Ellis prides herself on her ability to act within her clients’ best interests at all times, pushing forward to assist them in ensuring their brand is fully protected. In addition to assisting Trademarkroom clients in protecting their brand, Ellis will also be on hand as part of her role as a Solicitor at sister company Lawdit Solicitors to assist with any contentious matters that may arise.