Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
- Type: Convention
- Date of signature: 28/06/1989
- Place of signature: Madrid, Spain
- Depositary: World Intellectual Property Organization (WIPO)
- Date of entry into force: 01/12/1995
What is it about?
The Madrid Protocol, administered by the World Intellectual Property Organization, is a part of the “Madrid System” which consists of the present Protocol and the 1891 Madrid Agreement Concerning the International Registration of Marks. Under the Madrid Protocol a trademark applicant may file an application for international trademark registration, which then takes effect in all State parties to the Protocol. The scope of the Madrid Protocol is similar to the scope of the Agreement, though varying in certain significant aspects. As the 1891 Agreement was not widely accepted, the Protocol addresses the criticised issues. Under the 1891 Agreement, the “home” registration of a mark is required before an international application may be made. A trademark applicant must register a mark in his or her own State before seeking registration abroad. Under the 1989 Protocol, however, an application for international registration can be submitted before an application for national registration is approved. According to the 1891 Agreement a national registration revocation also results in an international revocation. The 1989 Protocol differs. As five years after issuance an international registration becomes independent of the national registration, an international revocation only occurs if the national registration is cancelled within that time period. Even in the event of a revocation, the 1989 Protocol allows applicants to pursue national registrations in multiple jurisdictions using the original filing date of the international registration. The present Protocol raises the delay during which a State can refuse to recognize the deposit of a trademark from 12 to 18 months. The renewal period is reduced to 10 years from 20 years, and the application may now be submitted in English or French.
Why is it relevant?
An international trademark filing system offers great benefits to a member State. It makes it easier for national trademark owners to obtain mark protection abroad (one single application in English or French). Therefore, it increases their willingness to do business within member States. The latter also benefit from a reduced paperwork burden.
The ratification of the 1891 Agreement is not required for acceptance of the Protocol. It is, however, tied to the Convention for the Protection of Industrial Property. Only member States to that Convention may ratify the Protocol. Inter-governmental Organizations possessing a regional office for the purposes of the registration of trademarks and of which at least one member State has ratified theConvention for Protection of Industrial Property may also become a Party to the Protocol.
- Trademark Law Treaty (Geneva, 27 October 1994)
- Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (Vienna, 12 June 1973)
- Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice, 15 June 1957)
- Madrid Agreement Concerning the International Registration of Marks (Madrid, 14 April 1891)
- Convention for the Protection of Industrial Property (Paris, 20 March 1883)