The Madrid system is a multi-national trademark system based on two international treaties:-
- the Madrid Agreement; and
- the Madrid Protocol.
The system is managed by the World Intellectual Property Organisation (WIPO) which is based in Geneva, Switzerland.
This system means that you no longer have to apply to several individual different countries to register your mark, which can take a lot of time and be much more expensive. By filing one application in one jurisdiction with one set of fees, the Madrid System has proved to be a much more cost effective way of managing international trademarks - provided of course that the country you wish to register are part of the Madrid Agreement.
There are, of course, risks in using the system in 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.
Another disadvantage is that not all countries participate in the agreement, check below to see if your country is listed:-
Albania
Antigua & Barbuda
Armenia
Australia
Austria
Azerbaijan
Bahrain
Belarus
Belgium
Bhutan
Bosnia and Herzegovina
Botswana
Bulgaria
China
Croatia
Cuba
Cyprus
Czech Republic
Denmark
Estonia
European Union (via
Community Trade Mark)
Finland
France
Georgia
Germany
Ghana
Greece
Hungary
Iceland
Iran
Ireland
Italy
Japan
Kenya
Korea (North)
Korea (South)
Kyrgyzstan
Latvia
Lesotho
Liechtenstein
Lithuania
Luxembourg
Macedonia
Madagascar
Moldova
Monaco
Mongolia
Morocco
Mozambique
Namibia
Netherlands
Norway
Poland
Portugal
Romania
Russian Federation
Sao Tome and Principe
Serbia & Montenegro
Sierra Leone
Singapore
Slovakia
Slovenia
Spain
Swaziland
Sweden
Switzerland
Syria
Turkey
Turkmenistan
Ukraine
United Kingdom
United States of America
Vietnam
Zambia
Those that aren't listed, aren't part of the agreement - so you may end up having to make separate applications to these countries.
If your home country is listed above, then you are able to use the system if you have a current trademark registration in your home country on a trademark application pending.
Applications are filed at the national Trade Mark office of the ‘home’ application or registration who pass the application to WIPO. WIPO conducts a formalities examination and then the application is granted covering all the countries specified. The Trade Mark Offices of the countries you've applied to then have 18 months to oppose the registration. An International Registration can only cover members of the Madrid Protocol (as listed above).
All rights in an International Registration date back to the day of filing, not the date on which the registration is granted.
To get some more advice on international trademarks, contact us.
