Madrid system
The Madrid system is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. Its legal basis is the multilateral treaty Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the Madrid Agreement.
The Madrid system provides a centrally administered system of obtaining a bundle of trademark registrations in separate jurisdictions. Registration through the Madrid system does not create a unified registration, as in the case of the European Union trade mark system; rather, it creates a bundle of national rights through an international registration able to be administered centrally. Madrid provides a mechanism for obtaining trademark protection in many countries around the world which is more effective than seeking protection separately in each individual country or jurisdiction of interest.
The Madrid Protocol system provides for the international registration of trade marks by way of one application that can cover more than one country. The opportunity of having a single registration to cover a wide range of countries gives advantages, both in terms of portfolio management and cost savings, as opposed to a portfolio of independent national registrations.
Madrid now permits the filing, registration and maintenance of trade mark rights in more than one jurisdiction, provided that the target jurisdiction is a party to the system. The Madrid system is administered by the International Bureau of the World Intellectual Property Organization in Geneva, Switzerland. There are 90 countries part of the Madrid System.
History and development
The Madrid system comprises two treaties; the Madrid Agreement Concerning the International Registration of Marks, 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.
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 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 European Community Trade Mark 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 December 1, 1995 and became operative on April 1, 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.
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. The treaty was eventually ratified during the Presidency of George W. Bush.
Japan revised its trademark law with the official acceptance of the Nice Classification, as well as applications covering service using service marks. The members of the European Community have amended their laws to conform to the European Community Harmonization Directive. In recent years trademark laws in several other countries such as Malaysia, New Zealand and South Africa have also been amended to accommodate the changes.
Members
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. The term 'Madrid Union' can be used to describe those jurisdictions party to either the Agreement or the Protocol.The primary reason the protocol—which has been in operation since 1996 and has 100 members — is more popular than the agreement — which has been in operation for more than 110 years and has 55 members—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 trade mark application, so that a trade mark 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 trade mark 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.'
| Contracting Party | Agreement | Protocol |
| Afghanistan | 2018 | |
| African Intellectual Property Organization | 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 | 1892 | 1998 |
| Bhutan | 2000 | 2000 |
| Bosnia and Herzegovina | 1992 | 2009 |
| Botswana | 2006 | |
| Brazil | 2019 | |
| Brunei Darussalam | 2017 | |
| Bulgaria | 1985 | 2001 |
| Cambodia | 2015 | |
| Canada | 2019 | |
| China | 1989 | 1995 |
| Colombia | 2012 | |
| Croatia | 1991 | 2004 |
| Cuba | 1989 | 1995 |
| Cyprus | 2003 | 2003 |
| Czech Republic | 1993 | 1996 |
| Democratic People's Republic of Korea | 1980 | 1996 |
| Denmark | 1996 | |
| Egypt | 1952 | 2009 |
| Estonia | 1998 | |
| Eswatini | 1998 | 1998 |
| European Union | 2004 | |
| Finland | 1996 | |
| France | 1892 | 1997 |
| 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 |
| 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 | 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 | 1893 | 1998 |
| New Zealand | 2012 | |
| North Macedonia | 1991 | 2002 |
| Norway | 1996 | |
| Oman | 2007 | |
| Philippines | 2012 | |
| Poland | 1991 | 1997 |
| Portugal | 1893 | 1997 |
| Republic of 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 | |
| Tunisia | 2013 | |
| Turkey | 1999 | |
| Turkmenistan | 1999 | |
| Ukraine | 1991 | 2000 |
| United Kingdom | 1995 | |
| United States of America | 2003 | |
| Uzbekistan | 2006 | |
| Viet Nam | 1949 | 2006 |
| Zambia | 2001 | |
| Zimbabwe | 2015 |
Advantages
The Madrid system provides a mechanism whereby a trademark owner who has an existing trademark application or 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 and renew registration across all applicable jurisdictions through a single administrative process.
Disadvantages
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, '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.
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.
Developments since 2000
Two significant recent developments in international trademark law were the accession of the United States and the European Union to the Madrid Protocol on November 2, 2003, and October 1, 2004, respectively. With the addition of these jurisdictions to the protocol, most major trading jurisdictions have joined the Madrid system.On 31 July 2015, Algeria deposited its instrument of accession and will accede 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 is now effective across the entire Madrid system.