Madrid system

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The Madrid system for the international registration of marks, also conveniently known as the Madrid system or simply Madrid, is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world.

The Madrid system provides a centrally administered system of obtaining a bundle of trademark registrations in separate jurisdictions, all of which are based on an "international registration". Madrid provides a mechanism for obtaining trademark protection in many countries around the world, which is more effective than seeking protection separately in each individual country or jurisdiction of interest.

Madrid modifies the territorial application of trademark laws. Prior to the widespread adoption of the system, it was not possible to obtain an 'international trademark', where a single trademark registration would automatically apply around the world. Madrid now permits the filing, registration and maintenance of trade mark rights in more than one jurisdiction on a global basis.(1) The Madrid system is administered by the International Bureau of the World Intellectual Property Organisation in Geneva, Switzerland.

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[edit] History and development

The Madrid system comprises two treaties; the Madrid Agreement Concerning the International Registration of Marks(2), which was concluded in 1891 and entered into force in 1892, and the Protocol Relating to the Madrid Agreement, which came into operation on 1 April 1996. The Madrid Agreement and Madrid Protocol were adopted at diplomatic conferences held in Madrid, Spain.

The Madrid Agreement was originally intended to provide for an international registration system, but did not achieve this for two significant reasons:

  • the lack of international acceptance. Many non-member countries, including the United Kingdom, the United States, and Central American, South American and Asian countries, such as Japan, were not adherents, which undermined recognition of the system as a truly "international" regime. Significantly, many of these countries represent the largest numbers of trademark filings and registrations in the world;
  • the mere forwarding by the International Bureau of a uniform application to member countries, rather than the registration of the applicable trademark in the national trademark registers, precludes an actual "registration" system.

Some of the large trading nations like the United States, Japan, and Canada, which have a large number of filings at the national level, did not join the Madrid Agreement due to another perceived flaw in the system; namely that if the home registration upon which an international registration was based came under 'central attack' (see further below), the international registration would be cancelled or limited to the same extent that the home registration was cancelled or limited.

During 1966 and 1967 attempts were made to address this issue by establishing a new treaty that would reflect the need of the times rather than the world of the 1890s when the Agreement was adopted. This led to the drafting of the Trademark Registration Treaty (TRT) which was adopted in Vienna in 1973 and entered into effect in 1980 with five contracting states, namely, Burkina Faso, Congo, Gabon, Soviet Union and Togo. In the absence of more accessions to the TRT and the low number of registrations since its inception, it was clear that the TRT was unlikely to supplant, or even stand beside, the Madrid Agreement.

As the realisation of the introduction of the multi-jurisdictional (or at least pan-European) European Community Trade Mark (CTM) approached, the relevancy of the Madrid system came under scrutiny. Pressure increased on WIPO to maintain its relevance and strengthen the Agreement by increasing membership, or by bringing about some amendment which would increase its membership. This culminated in the introduction of the Madrid Protocol, pursuant to which a CTM registration could be a 'foundation' or 'home' registration upon which an international registration could then be established. This mechanism is referred to as a "linking provision." The Protocol, after considerable lobbying efforts by WIPO, was signed by many countries, including most of the present members of the Madrid Agreement, and some countries that are members of the European Union, but not of the Madrid Agreement. The Protocol entered into force on December 1, 1995 and became operative on April 1, 1996.

Many countries have needed to modify or consider modifying their trademark laws in order to adhere to the Protocol, in addition to the modifications required by GATT-TRIPS/WTO.

In the United States, the proposal to accept trademark applications on the basis of a bona fide intent to use (an "ITU" in US trademark law terminology) was met with fierce partisan resistance by the US Congress, which considered that the US was being "pushed around by Europe". The treaty was eventually ratified during the Presidency of George W. Bush.[1]

Japan revised its trademark law with the official acceptance of the Nice Classification (an international trademark classification system for products and services), as well as applications covering service (see service marks). The members of the European Community have amended their laws to conform to the European Community Harmonization Directive. In recent years trademark laws in several other countries such as Malaysia, New Zealand and South Africa have also been amended to accommodate the changes.

[edit] Members

As of 15 January 2007, there are 80 members comprising the Madrid Union of jurisdictions which have become party to the Agreement or the Protocol or both. The primary reason why the Protocol — which in 2004 has been in operation for less than 10 years and has 72 members — is more popular than the Agreement — which has been in operation for more than 110 years and has 57 members — is that the Protocol introduced a number of changes to the Madrid system which significantly enhanced its usefulness to trademark owners.

For example, under the Protocol it is possible to obtain an international registration based on a pending trade mark application, so that a trade mark owner can effectively apply for international registration concurrently with or immediately after filing an application in a member jurisdiction. By comparison, the Agreement requires that the trade mark owner already holds an existing registration in a member jurisdiction, which may often take many months and sometimes years to obtain in the first place. In addition, the Agreement does not provide the option to ‘convert’ international registrations which have been ‘centrally attacked’ (see below).

[edit] Advantages

The Madrid system provides a mechanism whereby a trademark owner who has an existing trademark application or registration (known as the 'basic application' or 'basic registration') in a member jurisdiction may obtain an ‘international registration’ for their trademark from the World Intellectual Property Organization. The trademark owner may then extend the protection afforded to the international registration to one or more member jurisdictions, a process known as ‘designation’. A useful feature of the Madrid system is that this protection may generally be extended to additional jurisdictions at any time, such that international trade mark protection can be extended to new jurisdictions which subsequently join Madrid, or to such other jurisdictions as the trade mark owner may choose.

In basic terms, the primary advantage of the Madrid system is that it allows a trademark owner to obtain trademark protection in any or all member states by filing one application in one jurisdiction with one set of fees, and make any changes (eg. changes of name or address) and renew registration across all applicable jurisdictions through a single administrative process.

[edit] Disadvantages

One disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of the basic application or basic registration within five years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent. For example, if a basic application covers 'clothing, headgear and footwear' and 'headgear' is deleted for whatever reason, the international registration will only cover 'clothing and footwear'. The protection afforded by the international registration in each designated member jurisdiction will therefore only extend to 'clothing and footwear'. If in this example the basic application had been rejected as a whole, the international registration would also have been totally refused.

The process of attacking the basic application or basic registration for this purpose is generally known as ‘central attack’. Under the Madrid Protocol the effects of a successful central attack can be mitigated by transforming the international registration into a series of applications in each jurisdictions designated by the international registration, a process known as ‘transformation’. Although transformation is an expensive option of last resort, the resulting applications will receive the registration date of the international registration as their filing date.

In 1997, less than half of a percent of international registrations were canceled as a result of central attack. (Source: World Intellectual Property Organisation, www.wipo.int/madrid/en/)

The costs savings which usually result from using the Madrid system are negated by the requirement to use local agents in the applicable jurisdiction if any problems arise.

[edit] Recent developments

Two significant recent developments in international trade mark law were the accession of the United States and the European Union to the Madrid Protocol on 2 November 2003 and 1 October 2004, respectively. With the addition of these jurisdictions to the Protocol most major trading jurisdictions have joined the Madrid system.

[edit] External links

[edit] Notes

Note (1): Another important example of a supra-national system for the protection of trademark is the Community Trade Mark system in the European Union.

Note (2): The full name of the Madrid Agreement is the "Madrid Agreement Concerning the International Registration of Marks of April 14, 1891 (as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Nice on June 15, 1957, and at Stockholm on July 14, 1967, and as amended on September 28, 1979).

[edit] References

  1. ^ WIPO web site, List of Members of the Madrid System