Knowledge

Trade Marks

What is the Madrid Protocol?

Max Steinhausen

The Madrid Protocol is a treaty managed by the International Bureau of World Intellectual Property Organization (WIPO) in Geneva, Switzerland which facilitates the filing of trade mark applications for multiple countries, so-called International Registrations (IR). The Madrid Protocol allows owners of trade marks to designate other countries in their International Registrations.

Which countries are signatories to the Madrid Protocol?

It is important to note that an International Registration can only designate countries which are members to the Madrid Protocol. WIPO provides a comprehensive list of all countries which are signatories to the Madrid Protocol here. The majority of developed nations are members of the protocol including the USA, China and European countries. Countries that have not (yet) joined the Madrid Protocol are e.g. Hong Kong, Taiwan, Macao and the United Arab Emirates.

What are the advantages of using the Madrid Protocol?

  • The Madrid Protocol offers a simplified way of registering your trade mark in multiple countries at once.
  • If you later choose to expand your trade mark in other countries, the Madrid Protocol allows you to make subsequent designations for other member countries at a future date. This means that countries can be added as they become commercially valuable to your business.
  • The renewal process is very efficient as you may renew the International Registration in its entirety at once, instead of completing the renewal process for each individual country. The same is true for address changes and other maintenance tasks.
  • All countries will automatically honour the priority date of your basic application within six months of the filing date of your basic application.

What are the disadvantages of using the Madrid Protocol?

  • Using the Madrid Protocol can cause significant delays in processing your trade mark applications.
  • Enforcement of your trade mark can also be more complicated as some countries require you to obtain an additional national trade mark certificate before you can enforce your trade mark.
  • If the basic application in your home country is rejected or opposed, your International Registration will follow suit meaning that you can lose protection in all countries at once.
  • Since each country you select to include in your International Registration will examine your application separately and under its own laws and procedures, there is a higher chance for refusals based on formality issues.

What is the alternative to using the Madrid Protocol

The often better alternative to filing an International Registration under the Madrid Protocol is to make separate trade mark applications with the national trade mark offices in all relevant jurisdictions. This way, there are no processing delays and you can tailor your applications according to the national requirements to avoid formality issues.

If you wonder wether using the Madrid Protocol is the right choice for you, talk to us today!

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