Algeria ratified its membership to the Madrid Protocol on the 31st of july 2015, and has been incorporated to the Protocol as of the 31st of October 2015. Algeria was the last country to be solely member of the Madrid Agreement and not to the Madrid Protocol. As a member of both treaties it is now a member of the Madrid Union (a way to refer to the participant countries when they are members of both the Agreement and Protocol). However, being that all members are now party to both treaties, all applications shall be governed by the Protocol, allowing for trademark registration in Algeria done through the Madrid System to be more simple and flexible. Moreover, ball member countries of the Madrid System being now part of both the Protocol and Agreement will allow for the system as a whole to be unified… trademark registration in and through the 95 member states just got simpler!
Past differences between the Madrid Agreement and the Madrid Protocol – These will no longer be an issue as of 31st of October 2015, the system as a whole has been unified:
- Under the Madrid Agreement it was necessary for a trademark to be effectively registered in the office of origin in order for it to be extended to other member countries. Under the protocol, a filed application is sufficient. This difference is important considering that in some member countries the registration process could extend for more than three (3) years.
- Under the Madrid Agreement applications and procedures could only be filed in French, now the applications can be filed either in French, English or Spanish, being the applicant's choice what language to use.
- Under the Madrid Agreement, if the base trademark* was canceled during the first five (5) years all other applications made through the Madrid procedure (WIPO) would forcibly follow identical fate. Under the Madrid Protocol, if this were to occur, the extended applications could be transformed to national applications, and therefore be independent and follow individual local processes.
- Under the Madrid Agreement, the local trademark offices to where trademarks would be extended had a maximum period of 12 months to notify the applicants of initial refusals to the application on either relative or absolute grounds. Under the Madrid Protocol the period is extended to 18 months.
- Under the Madrid Agreement, the initial registration period for a trademark was 20 years before it had to be renewed. Under the Madrid Protocol this period is reduced to 10 years. Although this could be interpreted as negative, in practice it is positive due to the fact trademarks that where initially registered but in practice are irrelevant to their owners will be abandoned, giving true interested parties the chance to register either identical or similar trademarks.
- Under the Madrid Agreement the applicant necessarily had to register the base trademark in a member country where it had (a) “a real and effective industrial or commercial establishment”, or (b) domicile or (c) was a national of. The applicant would not be able to choose, but would have to use as country of origin the first one that fell under one of the categories following the order in which we have expressed it here. In the case of the Madrid Protocol, the applicant can choose any country in which it wishes to do so as long as it falls in one of the categories mentioned, irrelevant of the order.
* You must have already applied for or registered a mark with your Office of origin.
A unified Madrid System will allow for trademark owners who need to register in multiple countries to apply for registration more cheaply and more quickly. Hopefully the unification and therefore simplification of the system will serve as an incentive for other nations to join this system. This would allow for registration and protection of trademarks to be quicker, simpler and straightforward.
If you need to trademarks in multiple countries, the Madrid System may allow you to do so in a faster and more cost-efficient way. Contact us in order to determine if you may be able to do so and if it would be in your best interest.
Tirso García, Product Manager at iGERENT
Image | Nicolas Raymond