Madrid Agreement for International Registration of Trademarks

Madrid Agreement for International Registration of Trademarks

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What is the Madrid System?

The Madrid System popularly and officially known as Madrid System for the international registration of marks is a system which is centrally administered by the World Intellectual Property Organization (WIPO).[1] This system can be availed of by an individual or a company to obtain many or to say bundle of trademark registrations in separate jurisdictions, which create a basis for “international registration” of marks. The Madrid System is a very simple and a great way to register one’s trademark worldwide. A person by single Madrid registration can protect his/her trademark up to 122 countries around the world.

Treaties regulating the Madrid System

  • The Madrid Agreement: The treaty of Madrid Agreement was concluded in the year 1891 and was revised at Brussels in the year 1990. This treaty has been revised many times. After Brussels it was revised in Washington in the year 1991, subsequently in Hague in 1925, then in London in 1934, Nice in 1954, Stockholm in 1967 and finally it was amended in 1979.
  • Protocol: Although it is named as protocol, it is not a protocol and is actually the treaty of the Madrid system. The protocol which was released in furtherance to the Madrid Agreement concluded in the year 1989, was made to make the Madrid System flexible and more adaptable to the domestic legislation of other countries or intergovernmental organizations which were not able to adapt or were not in favour of accepting the Madrid Agreement.

The combination of the Madrid Agreement and Madrid Protocol is known as the Madrid System

Purpose of establishing the Madrid Agreement

The sole purpose of establishing the Madrid Agreement was to provide a mechanism that would allow an individual to file a single international trademark registration. This process was only simplified worldwide registration but also made it cost-effective and an inexpensive technique of registration of an international trademark. The Madrid Agreement not only simplified the process of registration of international trademark but also eliminated the need for filing, prosecuting or maintaining separate registration applications in multiple countries. The Madrid Agreement provides the same legal status to the mark across all the member countries as that provided in the registered country from where it is designated. If the Trademark office, which is situated in the designated country does not send a refusal to the World Intellectual Property Organization within 12 months, then the mark will have the protection of the registered national mark in that country. The Madrid Agreement also provides a simple renewal system of a mark by a single filing with the WIPO.  

Features of Madrid Agreement

  • The mark first should be registered at the national level in the national or home country which is the country of origin. The first registration is known as the ‘Basic registration’
  • The International filing should be only through the office of origin to the International bureau
  • The country of origin should be a member state
  • Central scrutiny feature of the Agreement.
  • Complementary fees must be paid.

As every coin has two sides and the Madrid Agreement, despite having so many advantages,  has some defects in its structure. These defects are such as: 

  • One should register the mark in the home country before the protection is awarded to the mark internationally
  • There is a risk of “Central attack” [2] to the mark
  • There is a very short examination period
  • There is also a limitation on assignability

Due to these defects, many countries like Australia, Denmark, Japan, United Kingdom, Sweden, etc never joined the Madrid Agreement. There are in total 57 countries which are members of the Madrid Agreement presently.

Madrid Protocol and the purpose of establishing it

The purpose of adopting the Madrid Protocol was to correct the deficiencies of the Madrid Agreement.  However, the aim and purpose of both the Madrid Protocol and Madrid Agreement are the same, which is to create a simple and cost-effective international trademark registration procedure. Madrid Protocol is to ensure the protection of marks in multiple countries through filing a single application at a single office in a single language using a single currency. No local agent is required by an individual for filing of an application. Madrid Protocol also simplifies the management of mark as an individual have a simple and single procedural step to record changes in the

  • Ownership
  • Or in the name or address of the holder with WIPO.

The international bureau governs the Madrid System and Coordinates all types of requests of protection or renewal and other documentation to all the members.

When a person reads about a Madrid Agreement and Madrid Protocol he/she might think it is same as there are many similarities between the two but there are also some differences between the two which are as follows :

  • In the agreement, only States have the accession whereas in protocol both states and intergovernmental organizations have the accession
  • Fee system in the agreement is basic, complementary, and supplementary whereas in the protocol, the fee system is basic, complementary and individual
  • The refusal period under the agreement is 12 months whereas in the protocol the refusal period is of 18 months which may be extended.
  • Dependency under the agreement is 5 years whereas under the protocol it is 5 years with the possibility of transformation
  • Validity under the agreement is of 20 years and in the protocol, it is of 10 years
  • Choice of office of origin in the agreement is real or effective industrial or commercial establishment whereas under the protocol it is the establishment, the domicile of origin.

Membership of the Countries in Madrid Agreement and Madrid Protocol

Initially, in the year 1892, there were only 5 member states to the Madrid Agreement, but as time passed, the number of countries increased to 52. Currently, there are 57 countries which are members of the Madrid Agreement. Countries are still prepared to ratify the agreement in spite of the existence of the protocol.

When introduced in the year 1996, the Madrid Protocol had 9 members and has now reached 47.

The majority of industrialized countries are either members of one treaty or both. Japan joined the Madrid Protocol in the year 2002 whereas the United States announced its intention of joining in 2002. All European Union states except Ireland are now members.

There are mainly 3 types of member countries which are

  • The countries that are members of the  agreement only
  • The countries that are members of the protocol only
  • The countries which are members of both the Madrid Agreement and Madrid Protocol.

The procedure of an application

Minimum requirements for filing an international application

  • There must be an applicant
  • Basic registration should be done
  • International application of trademark
  • There must be safeguard clause 
  • Language
  • Priority claimed
  • Fees

Who can apply?

  • International registration can be applied by any individual or national of a country which belongs to an agreement or to the protocol.
  • It can be applied by any natural person or legal entity which is domiciled or having a real and effective industrial or commercial establishment in a country belonging to either of the treaties.
  • Under the Agreement, the application for international registration must be based on a registration

Basic registration

The application of an international trademark which an individual is applying must be based on national application or national registration.

International application of trademark

  • It must designate one or more contracting parties
  • The application must provide a list of goods or services for which the protection is asked for
  • The mark which an individual is applying for international registration should be similar to that of basic registration or basic application.
  • The application should be filed in a form which is prescribed by the International bureau

Safeguard Clause

When both the contracting parties are members of the treaties that are Agreement and the protocol then the designation is decided by the Agreement. This is stated by the ‘Safeguard Clause’ of Article 9 series of Madrid Protocol.

Language

Under the Madrid Agreement, the only working language of communication with WIPO is French. Under the Madrid Protocol, the language of communication is English, French, and Spanish

Priority Claimed

The priority of an earlier filing can be claimed under Article 4 of the Paris Convention. The date of the international application must not be later than that of six months after the earlier filing

Fees

During the filing of an application for international registration of a trademark, there is a certain amount of money that an individual has to pay for the registration known as fees.

In theory, fees are paid directly to WIPO in Geneva in Swiss Francs, and most countries also request applicants to pay an additional ‘handling’ charge. There are different fee structure in the system which are as follows:

  • Standard fee structure: This fee structure is the same in both the agreement and the protocol.
  • Supplementary fee: This kind of fee is for each class of goods and services.
  • Complementary fee: This fee is for the designation of each designated contracting party for which individual fee is payable.

The amount paid in complementary and supplementary fees is totalled up and distributed among the member states in proportion to the number of designations that have been made of each of them.  The other kind of fee is only present in the protocol which is known as an individual fee. This type of fee is for the designation of each designated contracting party for which individual fee is payable.[3]

India and Madrid System:

Earlier India was not the part of the Madrid System but as soon India realised the advantages of becoming the part of Madrid system, it became one of its signatories of Madrid Protocol with effect from July 8, 2003. Most of India’s top trading partners are the members of Madrid Union[4].

How can an individual file in India?

Based on an Indian trademark of an individual, an individual can file an international application of registration online at the IP India website http://www.ipindia.gov.in/trade-marks.htm The further process is done by the government of India This made the application process easier in India.[5]

Madrid System is one of the best systems to protect an individual’s trademark internationally. By this system, a person does not need to register one’s trademark in different countries. By registration on one single platform, a person can protect his/her trademark across the world. The two treaties, the Madrid Agreement and Madrid Protocol make this system stronger.

Sources:

www.ipindia.nic.in

Endnotes:

  1. The organization made to encourage creative activity, to promote the protection of intellectual property around the world.
  2. The process by which an international registration may be defeated for all countries in which it is protected, by means of a single invalidation or revocation action against the basic registration has become generally known as a central attack.
  3. International Trademark Association, the Madrid System for the international registration of marks.
  4. Contracting parties of both Agreement and Protocol together are known as Madrid Union
  5. The Madrid Protocol: A route to global branding, January 2018

Aarushi Agarwal - ILS Law College

Arushi Agrawal

Author

Arushi hails from ILS Law College, Pune and she spends most of her time researching on new topics, art and craft, painting. Her Interest area lies in criminal and family law. For any clarifications, feedback, and advice, you can reach her at agrawalarushi463@gmail.com

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