The purpose of the trademark Madrid System for Multinational Trade Mark Applications is to facilitate the registration of trademarks in a large number of countries. It is regulated by the Madrid Protocol, a treaty signed by many parties, which allows the holder of a trademark to request the extension of a single trademark application or registration made in one Member State to any number of other Member States.
How does the trademark Madrid System work?
In order to apply the trademark Madrid System, a potential applicant must comply with one of the following requirements:
- Be a national of a Member State of the Union of Madrid;
- Be a citizen of a Member State of the Union of Madrid; or
- Have a real and effective industrial or commercial establishment in Madrid Member State of the Union.
This will determine the country of origin of the applicant.
The first stage of the process is the filing of a trademark application or the registration of a trademark Madrid system in the country of origin. This is achieved through the local trademark Madrid System office in accordance with the country ‘s requirements. Once a local trademark has been filed or registered, an application is made to the World Intellectual Property Organization ( WIPO) through the local trademark office to extend the trademark to the designated Member States.
The Trademark Madrid system Office of each designated country shall then proceed to the examination and acceptance or refusal of the application in accordance with its local regulations.
Should I use the Madrid System?
There are 121 existing signatories to the Madrid Protocol, including the European Union Intellectual Property Office (EUIPO) and the African Intellectual Property Organization (OAPI), and more are likely to enter the scheme in the short to medium term. The WIPO states that these jurisdictions cover more than 80% of world trade. However, it is worth mentioning that some major markets are not part of the system, including Hong Kong and the majority of South America.
Saving money and time
One of the key advantages of the Madrid method is simplicity, as a single application is submitted in one language without the need for translations, the power of attorney’s documents or any other paperwork. This also means a significant reduction in costs, as the applicant will not have to pay the legal fees of local lawyers or agents in order to file an application. It is also worth noting that the program permits ‘subsequent recognition,’ which means that the application may be applied slowly to new Member States after the initial WIPO application has been submitted, as the applicant’s company grows and its budget increases.
The system also facilitates the subsequent management of the portfolio of trademarks, such as renewals or changes in the details of the owner, since they can be done in bulk via WIPO instead of individually in each country. Finally, applying via the Madrid system ensures that applications are processed within a timeframe of 18 months, which may have a significant advantage in some countries where the duration of the process for locally-filed applications may be much longer.
Main drawbacks of the Madrid System
Absence of versatility
One of the main advantages of the system – the filing of a single application – can also be one of its drawbacks, as it means that the applications in all countries will be exactly the same. Although this is not always an issue, in some cases the applicants would appreciate being able to tailor the description of goods or services to a specific local market. In addition, a description acceptable to WIPO may be unacceptable in some local offices, leading to objections or initial refusals to the request.
Responses to local refusals
If an application is to be denied or objected to in one of the specified countries, any defense or response will have to be made by a local lawyer or agent in the same country, which means that the applicant will have to find one such local representative, incur additional costs for the procurement, subsequent translations and preparation and filing of the defense and, depending on the situation, the applicant will have to pay additional costs.
Dependence on the country of origin of the trademark
Within five years of its registration, the international trademark shall be subject to the validity of the trademark registered or filed in the country of origin in all designated countries. If the trademark were to be definitively refused, canceled or revoked, then the international trademark, i.e. all local applications based on the initial WIPO application, would also be lost – along with the substantial investment made by that trademark.
Some countries that are members of the Madrid system have specific requirements, such as, for example, the filing of a Statement of Use or a Statement of Use. Applications made through the Madrid program are also subject to certain conditions, which certain applicants have failed to comply with, leading to a delay in registration in some jurisdictions.
Applications for the Madrid / WIPO brand
We can assist you in filing a WIPO application and extend it to any of the members of Madrid from the following countries of origin: Australia, Austria, Benelux, China, the European Union, France, Germany, India, Italy, Japan, Russia, Spain, Switzerland, Turkey, United Kingdom, and the United States.
If you wish to extend your request from some other country of origin, please write to us and we will let you know if we can assist you.
Responses to provisional refusal
If you have received a provisional refusal to approve your WIPO application in one of the specified countries, we will be able to assist you with our comprehensive network of competent and experienced local lawyers. Only give us the specifics of the rejection and we’re going to get back to you.