The Madrid System for multinational trademark applications aims at facilitating the process of trademark registration in a large number of countries. It is governed by the Madrid Protocol, a treaty signed by multiple members, and allows a trademark holder to request the extension of a single trademark application or registration made in one member country to any number of other member countries.
How does the Madrid System work?
In order to use the system, a potential applicant must comply with one of the following requirements:
- Be a national of a Madrid Union member country; or
- Be a resident of a Madrid Union member country; or
- Have a real and effective industrial or commercial industrial establishment in Madrid Union member country.
This will determine the applicant’s country of origin.
The first stage of the process is to file a trademark application or have a trademark registered in the country of origin. This is done through the local trademarks office in compliance with the country’s requirements. Once the local trademark is filed or registered, an application is made to the World Intellectual Property Organization (WIPO) via the local trademarks office to extend the trademark to the designated member countries.
The trademarks office of each designated country will then proceed to examine and accept or refuse the application depending on their local regulations.
Should I use the Madrid System?
A great number of countries and organizations are current signatories of the Madrid Protocol, including the European Union Intellectual Property Office (EUIPO) and African Intellectual Property Organization (OAPI), and more are very likely to enter the system in the short to mid-term. The WIPO states that these jurisdictions cover more than 80% of the world trade. Nevertheless, it is worth mentioning that some important markets are not members of the system, among others Hong Kong and the majority of South America.
Saving Time and Money
One of the main benefits of the Madrid system is convenience, as a single application is filed, in one language, with no need for translations, Power of Attorney documents or other documentation. This also means significant reductions in costs, as the applicant will not need to pay the legal fees of local attorneys or agents in order to file the application. It is also worth mentioning that the system permits “subsequent designation”, which means that it is possible to extend the application to new member countries gradually once the initial WIPO application is filed, as the applicant’s business expands and their budget increases.
The system also facilitates the subsequent managing of the trademark portfolio, such as renewals or change of owner’s details, since they can be done in bulk via WIPO instead of individually in each country. Finally, applying via the Madrid system ensures that applications will be processed in a timeframe of 18 months, which can be a significant advantage in some countries where the length of the process for locally-filed applications can be much longer.
Main drawbacks of the Madrid System
Frequently these drawbacks mean that using the System is not that beneficial. If you want to file in individual countries we suggest that you visit our International Trademark Registration page and contact us if you have any questions.
Lack of flexibility
One of the system’s main benefits – the filing of one single application – can also be one of its drawbacks, as it means that the applications in all countries will be exactly identical. Though this is not always an issue, in some cases applicants would appreciate being able to tailor the description of goods or services to a specific local market. Furthermore, a description that is acceptable to WIPO might be unacceptable in some local offices, leading to objections or initial refusals to the application.
Responses to local refusal
If the application should receive a refusal or an objection in one of the designated countries, then any defense or response will have to be presented via a local attorney or agent in that same country, which means the applicant will have to find one such local representative, incur additional costs for the take-over, eventual translations and the preparation and filing of the defense, and, depending on the country, might also have to execute a Power of Attorney to appoint the local representative.
Dependence on the Country of Origin Trademark
During a period of five years following its registration, the international trademark in all designated countries is subjected to the validity of the trademark that is registered or filed in the country of origin. If this mark were to be definitively refused, cancelled or revoked, then the international trademark, that is to say, all the local applications based on the initial WIPO application, would also be lost – and along with it the substantial investment that this trademark represented.
Some countries that are members of the Madrid system have some specific requirements, such as for instance the filing of a Declaration of Use or Specimen of Use. Applications made via the Madrid system are still subjected to those requirements, which some applicants neglect to fulfill, leading to the lapse of the registration in some jurisdictions.
Madrid / WIPO trademark applications
We can help you file a WIPO application and extend it to any of the Madrid members from the following countries of origin: Australia, Austria, Benelux, China, European Union, France, Germany, India, Italy, Japan, Russia, Spain, Switzerland, Turkey, the United Kingdom and the United States.
If you wish to extend your application from any other country of origin please write to us and we will let you know if we can assist you.
Responses to Provisional Refusals
If you have received a provisional refusal to your WIPO application in one of the designated countries, we will be able to assist you thanks to our extended network of trustworthy and experienced local attorneys. Just send us the details of the refusal and we will get back to you.
Author: Victoire Bauvin Trademark Consultant @ iGERENT