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An Overview of The Madrid Protocol

Posted by Tulip Mahaseth on Thursday, Jan 16, 2020

Madrid Protocol-2

Red Points examines The Madrid Protocol,  a cost-effective single application system for obtaining trade mark protection in up to 122 countries.

SUMMARY

  • The Madrid protocol simplifies the registration of trademarks across 122 member countries.
  • Using the system is far more efficient and cost-effective than independent applications.
  • Applicants are advised to carry out searches of existing trademarks in the Protocol before filing their own.

Obtaining trademark protection in several countries by filing separate applications is both a complicated and expensive process, as the trademark laws may significantly differ from one country to another. 

By filing a single application for international registration under the Madrid Protocol, on the other hand, a trademark owner can obtain trademark protection in up to 122 countries.  Therefore, the Madrid Protocol provides a simple cost-effective solution to the problem of protecting trademarks in several countries. 

This article provides an overview of the Madrid Protocol describing its key features, member countries, its significance, Madrid Protocol filing and designation, and Madrid Protocol Database and Trademark Search.

[Free pdf] Learn how to register an American trademark

What is the Madrid Protocol?

The Madrid Protocol is an international treaty, administered by the International Bureau of the World Intellectual Property Organization (WIPO), that provides a cost-effective single application system for obtaining and maintaining trademark registrations in up to 122 member countries. 

The Madrid Protocol can be used to obtain international registration for a trademark that has already been applied for or registered in the Applicant’s home country (also known as country of origin), so long as the country is also a member of the Madrid Protocol. 

Moreover, once the trademark is granted in designated countries, a trademark owner only needs to file a single request with WIPO to renew the international registration when required, which would take effect in all designated member countries.  Similarly, fulfilling other formalities such as recording assignments, licenses, securities, mergers and changes of name and/or address etc. only require a single request for each of them.  This further simplifies maintaining and managing trademarks in several countries and results in considerable cost savings.

Madrid Protocol Countries

As of November 15, 2019, the Madrid Protocol has 106 members, which covers 122 countries that represent more than 80% of world trade.  The members include three regions comprising several countries as provided below:

  1. European Union (EU) region comprises all member countries of the European Union with the exception of Belgium, Netherlands, Luxembourg and Malta, which is not a member of the Madrid Protocol. The member countries of the EU region can be designated separately in an international registration under the Madrid Protocol.
  2. Benelux comprises Belgium, Netherlands and Luxembourg. Belgium, Netherlands and Luxembourg are treated as one country and cannot be designated separately in an international registration under the Madrid Protocol.
  3. African Intellectual Property Organization (OAPI) comprises Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, the Comoros, the Congo, Côte d'Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, the Niger, Senegal, and Togo. Members of the OAPI cannot be designated separately in an international registration under the Madrid Protocol.

A list of all 106 members of the Madrid Protocol is provided below (listed in alphabetical order):

  1. Afghanistan
  2. African Intellectual Property Organization (OAPI)
  3. Albania
  4. Algeria
  5. Antigua and Barbuda
  6. Armenia
  7. Australia
  8. Austria
  9. Azerbaijan
  10. Bahrain
  11. Belarus
  12. Belgium
  13. Bhutan
  14. Bosnia and Herzegovina
  15. Botswana
  16. Brazil
  17. Brunei Darussalam
  18. Bulgaria
  19. Cambodia
  20. Canada
  21. China
  22. Colombia
  23. Croatia
  24. Cuba
  25. Cyprus
  26. Czech Republic
  27. Democratic People's Republic of Korea
  28. Denmark
  29. Egypt
  30. Estonia
  31. Eswatini
  32. European Union
  33. Finland
  34. France
  35. Gambia
  36. Georgia
  37. Germany
  38. Ghana
  39. Greece
  40. Hungary
  41. Iceland
  42. India
  43. Indonesia
  44. Iran (Islamic Republic of).
  45. Ireland
  46. Israel
  47. Italy
  48. Japan
  49. Kazakhstan
  50. Kenya
  51. Kyrgyzstan
  52. Lao People’s Democratic Republic
  53. Latvia
  54. Lesotho
  55. Liberia
  56. Liechtenstein
  57. Lithuania
  58. Luxembourg
  59. Madagascar
  60. Malawi
  61. Malaysia
  62. Mexico
  63. Monaco
  64. Mongolia
  65. Montenegro
  66. Morocco
  67. Mozambique
  68. Namibia
  69. Netherlands
  70. New Zealand
  71. North Macedonia
  72. Norway
  73. Oman
  74. Philippines
  75. Poland
  76. Portugal
  77. Republic of Korea
  78. Republic of Moldova
  79. Romania
  80. Russian Federation
  81. Rwanda
  82. Samoa
  83. San Marino
  84. Sao Tome and Principe
  85. Serbia
  86. Sierra Leone
  87. Singapore
  88. Slovakia
  89. Slovenia
  90. Spain
  91. Sudan
  92. Sweden
  93. Switzerland
  94. Syrian Arab Republic
  95. Tajikistan
  96. Thailand
  97. Tunisia
  98. Turkey
  99. Turkmenistan
  100. Ukraine
  101. United Kingdom
  102. United States of America
  103. Uzbekistan
  104. Viet Nam
  105. Zambia
  106. Zimbabwe

WIPO updates the list of Madrid Protocol countries as more countries continue to join, a list of current Madrid Protocol members can be found on the WIPO website.

 

Madrid Protocol Filing

Under the Madrid Protocol, applications for international registrations must be filed with the Applicant’s home country’s trademark office and must indicate the prior filed home country application or registration upon which the international application is based.  For example, to register American trademarks, the Applicant should register first in the United States, then the process may continue for other nations through the Madrid Protocols. The application can be filed in either English, French or Spanish. 

When filing the international application, the Applicant is required to designate at least one member country of the Madrid Protocol other than the home country.  The home trademark office confirms the details of the Applicant’s home application or registration and then forwards the application to WIPO.  WIPO checks that the basic filing requirements have been fulfilled, and if so, enters the mark in the international register granting international registration. 

However, it is important to note that grant of international registration in itself does not provide trademark protection in the designated countries/regions. The scope of protection of the trademark will be evaluated by the designated National IP Offices.

After the mark has been entered on the international register, WIPO then sends copies of the international application to the trademark offices in the designated countries for examination and registration of the mark. 

The designated member countries have a period of 12 or 18 months (which is extendable if the trademark is opposed by a third party during examination) to either grant the trademark issuing a Statement of Grant of Protection or reject the application.

Depending on the country, grounds for rejecting the trademark application include 1) conflicts with existing rights of a third party, 2) lack of distinctiveness of the mark, 3) mark is descriptive or generic, and 4) mark is likely to cause confusion. The Applicant can respond to the opposition or rejection of the trademark application in a designated member country according to the trademark laws of the country. 

Madrid Protocol Designations

The Applicant is required to designate at least one member country of the Madrid Protocol other than the home country when filing the international application. The Applicant may choose to designate as many member countries as they like at the time of filing or after the international registration is granted. Additional designations at later times are also allowed.

Additionally, if a new country joins the Madrid Protocol, the Applicant can apply to have its trademark protection extended to the new country using a subsequent designation. 

Why is the Madrid Protocol Significant?

The Madrid Protocol provides a cost-effective and efficient system for obtaining and maintaining trademark protection in up to 122 countries. 

Filing separate trademark applications in the trademark offices of various countries according to their divergent trademark laws and paying a separate fee for each filing is a very cumbersome and expensive process.  Under the Madrid Protocol, an Applicant only needs to file one international trademark application with their home trademark office based on a prior trademark application or grant, and just pay one fee to obtain international trademark protection in several countries. 

An added advantage of having a single application system is that there is a single renewal date once the trademark is granted in the designated countries, which is ten years from the filing of the international application.  This single renewal fee can be paid by filing a single request with WIPO to renew the international registration. 

Under the Madrid Protocol, other formalities such as recording assignments, licenses etc. also require a single request to be filed with WIPO for each of them.  Therefore, the Madrid Protocol provides a streamlined cost-effective system for trademark prosecution and maintenance in up to 122 countries.

 

Madrid Protocol Database and Madrid Protocol Trademark Search

Before filing an international trademark application, Applicants should, at the very least, perform a search on Madrid Monitor, which runs a search on trademarks registered through the Madrid Protocol, for marks similar or identical to their marks that are already registered in the countries Applicants plan to designate on the international application. 

WIPO Global Brand Database, which runs a search on an extensive database of trademark registrations from 55 national and international collections including the trademarks registered through the Madrid Protocol, is also another excellent resource to find similar or identical marks. 

By carrying out this search, Applicants can gauge the ease or difficulty of registering their trademarks in the countries they plan to designate on the international application and modify their prosecution strategy accordingly. Applicants have also the option to contact IP agencies and legal experts to help them fill correctly their trademark registration

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About the author

Tulip Mahaseth

Post Written by Tulip Mahaseth

Tulip Mahaseth, PhD, is a legal content contributor for Red Points. She is the Intellectual Property (IP) Counsel at Synthego Corporation. Tulip practices IP counseling in the life sciences field. Her practice areas span patent application drafting and prosecution, patent landscape analysis, patentability opinions, non-infringement opinions, freedom-to-operate analysis, trademark counseling and trade secrets cataloging and counseling. Prior to joining Synthego, she practiced patent prosecution and counseling as an attorney at Bozicevic Field & Francis LLP and Foley & Lardner LLP, Palo Alto. Tulip is admitted to practice before the State Bar of California and the United States Patent and Trademark Office. Tulip received her JD, cum laude, from Northwestern University School of Law, where she was a George L. Quilici Scholar and Foley & Lardner Diversity Fellow. Tulip holds an M.S. and a Ph.D. in Microbiology from University of Illinois at Urbana-Champaign. She received her integrated M.S. in Biological Sciences with First Division honors from Birla Institute of Technology and Sciences, Pilani.