summary of the madrid agreement concerning the international registration of marks

8/9/2019 Summary of the Madrid Agreement Concerning the International Registration of Marks

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Summary of the Madrid Agreement

Concerning the International Registration of

Marks (1891) and the Protocol Relating to thatAgreement (1989)

Introduction

The Madrid System for the International Registration of Marks is governed by two

treaties:

•

the Madrid Agreement, concluded in 181 and revised at !russels "1##$, %ashington "111$, The &ague "1'($, )ondon "1*+$, ice "1(-$ and Stockholm"1.-$, and amended in 1-, and

• the Protocol relating to that /greement, concluded in 18, which aims to makethe Madrid system more fle0ible and more comatible with the domestic legislationof certain countries or intergovernmental organi2ations that had not been able toaccede to the /greement3

States and organi2ations arty to the Madrid system are collectively referred to as

4ontracting 5arties3

The system makes it ossible to rotect a mark in a large number of countries by

obtaining an international registration that has effect in each of the designated

4ontracting 5arties3

Who May Use the System ?

/n alication for international registration "international alication$ may be filed

only by a natural erson or legal entity having a connection 6 through establishment,

domicile or nationality 6 with a 4ontracting 5arty to the /greement or the 5rotocol3

/ mark may be the sub7ect of an international alication only if it has already been

registered with the trademark office of the 4ontracting 5arty with which the alicant

has the necessary connections "referred to as the office of origin$3 &owever, where all

the designations are effected under the 5rotocol "see below$, the international



alication may be based simly on an alication for registration filed with the office of

origin3 /n international alication must be resented to the International !ureau of

%I5 through the intermediary of the office of origin3

The International Application

/n alication for international registration must designate one or more 4ontracting

5arties in which rotection is sought3 9urther designations can be effected subseuently3

/ 4ontracting 5arty may be designated only if it is arty to the same treaty as the

4ontracting 5arty whose office is the office of origin3 The latter cannot itself be

designated in the international alication3

The designation of a given 4ontracting 5arty is made either under the /greement or the

5rotocol, deending on which treaty is common to the 4ontracting 5arties concerned3 If both 4ontracting 5arties are arty to the /greement and the 5rotocol, the designation

will be governed by the 5rotocol3

International alications can be filed in ;nglish, 9rench or Sanish, irresective of

which treaty or treaties govern the alication, unless the office of origin restricts that

choice to one or two of these languages3

The filing of an international alication is sub7ect to the ayment of a basic fee "which

is reduced to 1# er cent of the rescribed amount for international alications filed byalicants whose country of origin is an )<4, in accordance with the list established by

the =nited ations$, a sulementary fee for each class of goods and>or services beyond

the first three classes, and a comlementary fee for each 4ontracting 5arty designated3

&owever, a 4ontracting 5arty to the 5rotocol may declare that, when it is designated

under the 5rotocol, the comlementary fee is relaced by an individual fee, whose

amount is determined by the 4ontracting 5arty concerned but may not be higher than

the amount that would be ayable for the registration of a mark, at the national level,

with its office3

International Registration

nce the International !ureau receives an international alication, it carries out an

e0amination for comliance with the reuirements of the /greement, the 5rotocol and

their 4ommon Regulations3 This e0amination is restricted to formalities, including the



classification and comrehensibility of the list of goods and>or services3 If there are no

irregularities in the alication, the International !ureau records the mark in the

International Register, ublishes the international registration in the WIPO Gazette

of International Marks "hereinafter referred to as ?the @a2ette?$, and notifies it to

each designated 4ontracting 5arty3 /ny matter of substance, such as whether the markualifies for rotection or whether it is in conflict with a mark registered reviously in a

articular 4ontracting 5arty, is determined by that 4ontracting 5artyAs trademark office

under the alicable domestic legislation3 The @a2ette is available in electronic form "eB

@a2ette$ on the Madrid system website3

Statement of Grant of Protection or Refusal of

Protection

The office of each designated 4ontracting 5arty shall issue a statement of grant of

rotection under Rule 18ter of the 4ommon Regulations3

&owever, when designated 4ontracting 5arties e0amine the international registration

for comliance with their domestic legislation, and if some substantive rovisions are

not comlied with, they have the right to refuse rotection in their territory3 /ny such

refusal, including an indication of the grounds on which it is based, must be

communicated to the International !ureau, normally within 1' months from the date of

notification3 &owever, a 4ontracting 5arty to the 5rotocol may declare that, when it is

designated under the Protocol, this time limit is e0tended to 18 months3 That

4ontracting 5arty may also declare that a refusal based on an oosition may be

communicated to the International !ureau even after the 18Bmonth time limit3

The refusal is communicated to the holder of the registration or the holderAs

reresentative before the International !ureau, recorded in the International Register

and ublished in the @a2ette3 The rocedure subseuent to a refusal "such as an aeal

or a review$ is carried out directly by the cometent administration and>or court of the

4ontracting 5arty concerned and the holder, without the involvement of the

International !ureau3 The final decision concerning the refusal must, however, be

communicated to the International !ureau, which records and ublishes it3

Effects of an International Registration

http://www.wipo.int/madrid/en/madridgazette/index.html







The effects of an international registration in each designated 4ontracting 5arty are,

from the date of the international registration, the same as if the mark had been

deosited directly with the office of that 4ontracting 5arty3 If no refusal is issued within

the alicable time limit, or if a refusal originally notified by a 4ontracting 5arty is

subseuently withdrawn, the rotection of the mark is, from the date of theinternational registration, the same as if it had been registered by the office of that

4ontracting 5arty3

/n international registration is effective for 1# years3 It may be renewed for further

eriods of 1# years on ayment of the rescribed fees3

5rotection may be limited with regard to some or all of the goods or services or may be

renounced with regard to some only of the designated 4ontracting 5arties3 /n

international registration may be transferred in relation to all or some of the designated4ontracting 5arties and all or some of the goods or services indicated3

Advantages of the Madrid System

The Madrid system offers several advantages for trademark owners3 Instead of filing a

searate national alication in each country of interest, in several different languages,

in accordance with different national or regional rocedural rules and regulations and

aying several different "and often higher$ fees, an international registration may be

obtained by simly filing one alication with the International !ureau "through theoffice of the home country$, in one language ";nglish, 9rench or Sanish$ and aying

one set of fees3

Similar advantages e0ist for maintaining and renewing a registration3 )ikewise, if the

international registration is assigned to a third arty, or is otherwise changed, such as a

change in name and>or address, this may be recorded with effect for all designated

4ontracting 5arties by means of a single rocedural ste3

To facilitate the work of the users of the Madrid system, the International !ureauublishes a Guide to the International Registration of Marks under the

Madrid Agreement and the Madrid Protocol 3

The Madrid /greement and 5rotocol are oen to any State arty to the 5aris 4onvention

for the 5rotection of Industrial 5roerty "188*$3 The two treaties are arallel and

indeendent, and States may adhere to either or both of them3 In addition, an

http://www.wipo.int/madrid/en/guide/






intergovernmental organi2ation that maintains its own office for the registration of

marks may become arty to the 5rotocol3 Instruments of ratification or accession must

be deosited with the <irector @eneral of %I53

summary of the madrid agreement concerning the international registration of marks

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