The Madrid system is a system allowing the international registration of trademarks. After a short introduction regarding this system, the aim of this article is to discuss the advantages and the drawbacks of it.
The system of international registration of marks is governed by two treaties:
- The Madrid Agreement Concerning the International Registration of Marks (1891): this text will be further referred in this article as the Agreement.
- The Protocol Relating to the Madrid Agreement (1989) referred later in this article as Protocol.
The Madrid system is administered by the International Bureau of the World Intellectual Property Organisation (WIPO). The main advantage of this system is the possibility to have a trademark protected in several countries while only filling one application. It can save hours of research on local intellectual property websites. Initially it might seem that this system can’t possibly have any drawbacks, nonetheless we will explore later what sort of drawbacks can exist.
The WIPO list the two objectives of the Madrid System as:
- Facilitate ‘the obtaining of protection for marks’.
- ‘Secondly, since an international registration is equivalent to a bundle of national registrations, the subsequent management of that protection is made much easier.’
When registering trademarks in multiple countries, the Madrid System can result in significant time savings for the applicant. Moreover, an international registration can be extended to any of the contracting parties of the Madrid Protocol (over 80 contracting parties) that the applicant chooses. The trademark owner can also extend his trademark if additional countries become members of the protocol.
As said above, the possibility of an international registration is really valuable; it simplifies the paper to be filled for the registration and also makes the renewal easier. Before the Protocol, international registrations could only be filed in French, now the Protocol allows filling the application in different languages (three official languages: English, French, and Spanish). This possibility allows an increase of applications numbers from the United States and Latin America countries.
The Madrid Protocol allows organisations to realise savings in both time and money when filing trademarks in multiple countries.
The protocol is really more relevant and interesting than the Agreement because it allows a registrant to ask for a registration of a trademark based on a pending trademark application. In practice, imagine someone applying for registration in a country, at a same time he can fill an application to register his mark in front of the WIPO.
One final advantage is the opt-back option: if your Community Trade Mark application failed in some countries, the opt-back option offers you the possibility to divide your trademark and to claim a trademark in each individual country. Each individual country in the European Union stays part of the international registration.
I will take an example to make this point clearer: you opt for an international registration choosing to start from the United Kingdom and deciding to choose the following countries: the European Union, the USA, Japan, China and India. ‘If the designation of the European Union […] has been withdrawn, refused or has ceased to have effect, conversion may be requested through a subsequent designation of its Member States.‘ The opt out option allows to convert the designation of the European Union into either a national application which means you need to register direction at the office of the Member State. The other option is a subsequent designation of the European Member state under the Madrid system.
If we take back the example it means to pick European Union countries you are interested with and to apply independently for each of them.
- Who can use it?
This system can be used by anyone who complies with one of the following requirements:
- Has a real and effective industrial or commercial establishment in a contracting party
- Is domiciled in a contracting party
- Is a national of a contracting state, or
Is a national of a state member of a contracting organization
Which law is applicable to internationally registered trademarks?
When an international registration is filled within the WIPO office, then law of each member state is applied nationally. It means that each state will individually decide whether or not the trademark can be registered. Different decisions do not impact the overall process.
Once each country decides whether or not to register the trademark, the World Intellectual Property Organisation does not grant an international trademark registration which could be enforceable in a lot of different jurisdiction. In case of problem, actions must be taken in front of national jurisdictions of member states.
In other words, the WIPO gives you a certificate but it does not mean you have the right to enforce it everywhere. Countries do not respect decision of other country and if they decide to enforce it. Basically if a decision from country A needed to be enforced in country B, judges of country B look at the decision and decide whether or not this decision will be enforced (they can decide not to enforce it if the decision is against one of the country’s principle, in the UK all the decision from Africa continent especially regarding weddings are not necessarily enforceable here).
- Risk of the Madrid system: the dependence on the basic mark
For a period of five years from the date of its registration, an international registration remains dependant on the mark registered or applied for in the office of origin: the home registration.
This means that if anything happens to the home registration – amended, denied, withdrawn or cancelled, within the first five years following the international registration, the international registration suffers the same treatment and the rights in all designated states are affected.
A) Important choice of your home country
Before the Protocol, a trademark must be registered in its country of origin. This obligation has been withdrawn; a home country application is now possible. As we just saw, the choice of the home country is really important.
It is now time to explore what is called ‘home country’ or as called in the Protocol ‘Office of origin’. The Protocol offers more freedom in the choice which is really valuable for a worldwide company. They can choose the office of origin on the basis of establishment, domicile or nationality. The interpretation of «national», «domicile» and «real and effective commercial or industrial establishment» is a matter for the laws of the Contracting Parties to determine. Nonetheless the Guide to the International Registration of Marks can offer some guidance.
When a company wants to register a mark worldwide they can choose for home country a country where the brand is already registered and more importantly already valid.
B) The European Union and the Madrid Protocol
The European Union offers a centralised system to register a trademark within the twenty-seven members: the Community Trade Mark. The Community Trade Mark can be a basis for an international registration however, the same five years period as mentioned above applies.
Basing an international registration on a Community Trade Mark is a massive risk because your trademark can be the subject of objection not only in one country as it is the case when you do an international registration based on one home country but on twenty-seven countries.
Moreover, the European Union is now part of the Madrid Protocol which means you can claim all the European Union when you fil an international registration. This choice allows you to avoid filing an application through the European trademark office: Office for Harmonization in the International Market (OHIM).
The Madrid System is a really valuable system for people who want to register a trademark worldwide. Nonetheless this registration is not without any danger and applicants should take into consideration the risks and ask themselves whether or not it is worth it. They should avoid as much as they can to base an international registration on a Community Trade Mark.
On the WIPO you can have an idea of the price of an international registration thanks to the international application simulator.
For example, let’s assume my home country is the United Kingdom, and we want to register a trademark:
- In the EU, the US, Japan, China, and India
- In 3 different classes
- In colour
The total for this registration is CHF 3704 ($4121) – including the initial registration in the UK. If you use the simulator, you will have a detailed breakdown of the cost for each country; in our example the European Union costs CHF 1111 ($1200).