Madrid Protocol

"Madrid Agreement" redirects here. For other uses, seeMadrid Agreement (disambiguation).

For the Madrid Protocol relating to mining in the Antarctic, seeProtocol on Environmental Protection to the Antarctic Treaty.For the great-power agreement over the Sulu Archipelago, seeMadrid Protocol of 1885.

TheMadrid System,also known as theMadrid Protocolor simplyMadrid,is the primary international system for facilitating the registration oftrademarksin multiple jurisdictions around the world. It was established pursuant to the multilateraltreatiesMadrid Agreement Concerning the International Registration of Marksof 1891 and theProtocol Relating to the Madrid Agreement(1989), which has been the sole governing treaty since 2016.

The Madrid System provides a centrally administered system for obtaining multiple trademark registrations in separate jurisdictions; it does not create a single unified registration across different jurisdictions, as in the case of theEuropean Union trademark system.Rather, applicants file a single international trademark application and pay one set of fees to apply for protection in any or all countries that are members of the system; each country has discretion to grant the application. Once the trademark authority of a designated country grants protection, the mark is protected in that jurisdiction just as if that office had registered it.

The Madrid System is administered by the International Bureau of the United NationsWorld Intellectual Property Organization(WIPO) inGeneva,Switzerland.As of February 2023, the Madrid System consists of 114 members covering 130 countries;known collectively as the Madrid Union, they represent more than 80% of world trade.

History and development

The Madrid system comprises two treaties; theMadrid Agreement Concerning the International Registration of Marks,which was concluded in 1891, and entered into force in 1892, and theProtocol 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 inMadrid, 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 theUnited Kingdom,theUnited States,andCentral American,South AmericanandAsiancountries, such asJapan,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.

Some of the large trading nations like the United States, Japan, andCanada,which have a large number of filings at the national level, did not join the Madrid Agreement due to another perceived flaw in the system: if the home registration upon which an international registration was based came under 'central attack', the international registration would be cancelled or limited to the same extent that the home registration was cancelled or limited.

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 (TRT) which was adopted inViennain 1973, and entered into effect in 1980, with five contracting states, namely,Burkina Faso,Congo,Gabon,Soviet UnionandTogo.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 (or at least pan-European) EuropeanCommunity Trade Mark(CTM) approached, the relevancy of the Madrid system came under scrutiny. Pressure increased onWIPOto 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 1 December 1995, and became operative on 1 April 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 byGATT-TRIPS/WTO.

In Europe, resistance to the Protocol was brought by trademark attorneys who were afraid of losing business because aCommunity Trade Markapplication 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 ofGeorge W. Bush.With the accession of the U.S. and EU to the Madrid Protocol on 2 November 2003, and 1 October 2004, respectively, most major trading jurisdictions have joined the Madrid system.

On 31 July 2015,Algeriadeposited its instrument of accession and acceded 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 became effective across the entire Madrid system.

Members

Madrid Union members (green) and jurisdictions that are not members but are members of either OAPI or the EU (blue).

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 (when Algeria joined the Madrid Protocol on 31 October 2015, all of the members of the Madrid Agreement were also members of the Madrid Protocol and many of the aspects of the Madrid Agreement ceased to have any practical effect). The term 'Madrid Union' can be used to describe those jurisdictions party to either the agreement or the protocol (or both).

The protocol has been in operation since 1996 and has 100 membersmaking it more popular than the agreement, which has been in operation for more than 110 years and has 55 members.The primary reason the protocol is more popular than the agreement 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 trademark application, so that a trademark 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 trademark 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.'

Table of Madrid Union members with year of accession to the agreement and protocol, as applicable

Contracting party	Agreement	Protocol
Afghanistan		2018
African Intellectual Property Organization (OAPI)		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
Cabo Verde		2022
Cambodia		2015
Canada		2019
Chile		2022
China	1989	1995
Colombia		2012
Croatia	1991	2004
Cuba	1989	1995
Cyprus	2003	2003
Czech Republic	1993	1996
North Korea	1980	1996
Denmark		1996
Egypt	1952	2009
Estonia		1998
Eswatini	1998	1998
European Union		2004
Finland		1996
France	1892	1997
The 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
Jamaica		2022
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
South 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
Trinidad and Tobago		2020
Tunisia		2013
Turkey		1999
Turkmenistan		1999
Ukraine	1991	2000
United Kingdom		1995
United States of America		2003
Uzbekistan		2006
Vietnam	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 (known as the 'basic application' or 'basic 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 (e.g. changes of name or address) and renew registration across all applicable jurisdictions through a single administrative process and the payment of a single fee.

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 (for whatever reason), '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.

See also

• Singapore Treaty on the Law of Trademarks
• International (Nice) Classification of Goods and Services
• World Intellectual Property Organization

External links

• WIPO Madrid system homepage
• Madrid Agreement Concerning the International Registration of Marksin theWIPO Lexdatabase — official website ofWIPO.
  • The full text of theMadrid Agreement Concerning the International Registration of Marks (as amended on 28 September 1979)(in English).
• Protocol Relating to the Madrid Agreement Concerning the International Registration of Marksin theWIPO Lexdatabase — official website ofWIPO.
  • The full text of theProtocol Relating to the Madrid Agreement Concerning the International Registration of Marks (as amended on 12 November 2007)(in English).
• Brief Overview Of Madrid Protocol
• Overview of Madrid Protocol with list of member states as of August 2024