Madrid Protocol

The Madrid Protocol, adopted in 1989 and administered by WIPO, establishes the system for the international registration of trade marks. It allows the proprietor of a national or regional trade mark to obtain, through a single application filed in a single language and on payment of a single set of fees, protection for its trade mark in all the contracting parties it designates. The resulting international trade mark is not a unitary title, but a bundle of national protections obtained through a centralised procedure.

How international registration works

The international application is based on a basic mark, whether an application or a registration, filed with the office of origin, which certifies its conformity before forwarding it to WIPO. WIPO carries out a formal examination, records the trade mark in the International Register, publishes it and notifies it to the offices of the designated contracting parties. Each designated office examines the application under its national law and may notify a provisional refusal within twelve months, extended to eighteen months for the parties that have so declared, and beyond in the event of opposition. In the absence of refusal within that period, the trade mark is protected in that country as if it had been registered there directly. Subsequent designations make it possible to extend protection to other countries without a fresh filing.

Dependency and transformation

For five years from the international registration, it depends on the fate of the basic mark. If the basic mark is withdrawn, refused, invalidated or revoked during that period, in whole or in part, the international registration is cancelled to the same extent for all designated parties, a mechanism known in practice as central attack. The proprietor may then transform its designation into national applications, retaining the date of the international registration, within three months of the cancellation. Once the five year period has elapsed, the international registration becomes independent of the basic mark.

Practical use and the link with the European Union

The international registration lasts ten years and is renewed centrally with WIPO. Recordals of changes in ownership, limitations or licences are likewise made through a single step. The European Union is party to the Protocol, so that a European Union trade mark may serve as the basis for an international application, and an international application may designate the Union, the EUIPO then examining it as an application for a European Union trade mark. The system calls for a considered filing strategy, since any weakness of the basic mark affects the whole family for five years, and since certain countries, including the United States, apply their own requirements, in particular a declaration of intention to use.

Key points

The Madrid Protocol makes it possible to extend a trade mark to many countries through a single application to WIPO, each designated office retaining the power to refuse under its own law within twelve or eighteen months. For five years, the international registration follows the fate of the basic mark. The strength of the basic mark should be checked before extending it, and notifications of provisional refusal should be monitored so as to respond within the national time limits.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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