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International Trademarks – The Madrid System FAQs

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The Madrid System

What is the Madrid System?

The Madrid System deals with the international registration of trademarks.

It is comprised of two treaties: The Madrid Agreement Concerning the International Registration of Marks, followed by the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

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The Madrid Agreement dates from 1891.

The Madrid Protocol is the updated version that now governs international applications and registrations.

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What is the focus of the Madrid System?

The Madrid System focuses on the filing of trademarks in multiple countries and/or regions, and it is an efficient and cost-effective solution for obtaining trademark protection across territories.

What are the advantages of the Madrid System?

The System allows trademark holders to file for trademark protection in multiple territories with one application.

IP owners use one trademark office in one language and one currency and set of fees, streamlining the process and making it much simpler to gain protection and manage intellectual property assets internationally.

While using the Madrid System, there is no need for a local agent, nor is there a need to deal with country-specific applications in different locations and languages, with various fees and currencies.

Who is in charge of the Madrid System?

The International Bureau of the World Intellectual Property Organization (WIPO) administers the Madrid System from its offices in Switzerland.

How many countries are part of the Madrid International Trademark System?

Currently, one application can grant protection in up to 128 countries. As there are fees associated with registration, you can choose the territories in which to apply for trademark protection.

The International Registration of Marks

What is international trademark registration?

International registrations, obtained through the Madrid Protocol, allow trademark holders to gain protection in multiple countries and regions using a single application.

Can I gain international registration for every country around the world?

International registration may grant protection in member countries and regions, referred to as Contracting Parties.

Does trademark protection apply internationally?

No. Trademarks and other intellectual property assets are territorial.

An International Registration under the Madrid System still gives each country in which you apply for registration the right to determine whether it grants protection in the territory.

In other words, it does not unify or harmonize trademark law in all member countries.

Each country reviews the application, and once it approves it, the trademark is registered in that country and gains the same protection as it would have had it been registered there.

What is international designation under the Madrid Protocol?

For international trademark registrations, the applicants can designate member countries to file their applications.

If trademark owners later choose to designate additional member countries, they can.

This happens as brands look for more international protection or when a new country or region joins the Madrid Protocol.

Do I have to register in each member country?

Trademark registration through an international application is based on the Office of Origin, to which you add one more country, choose a few countries or all parties to the System.

Your “home” country trademark office confirms the application or registration of a trademark before it forwards it to WIPO.

WIPO examines the application to verify the filing requirements have been met before adding the mark to the international register.

What are the requirements to file an international trademark application?

A natural person or a legal entity can use the Madrid System of international registration.

To register an international application, you have to meet two requirements:

Have a connection with a contracting party to the Madrid System. According to WIPO, you must submit your international application through the Office of Origin with which you have the connection.
Having a connection creates the right to file through establishment, domicile or nationality. In other words, if you have an industrial or commercial business in the member territory, you live there or if you are a national of a contracting party. Without the necessary connection, a person or a legal entity cannot file for International Registration.
If you have a connection to more than one party, you can choose where to file. For example, if you are a national of one member country living in another member country, you can apply in either one.
Register your basic mark with the Office of Origin (as explained above). This is required before you can file an international application through this office, as the international application is based on your basic mark and the Office of Origin is the one to forward the application to WIPO.

What is the Office of Origin?

A trademark’s Office of Origin is the office in which you apply to register your basic trademark.

The office is required to be in one of the contracting parties. After application to the Office of Origin, you can apply for international registration.

In what languages can you file an international application?

The application can be filed in English, French, or Spanish.

The Office of Origin then has the right to decide whether applicants can file in only one of these languages, two or any one of the three.

Does the international registration of trademarks provide protection?

The international registration of a trademark is not enough to grant trademark protection in the designated countries and/or regions (such as the EU).

After WIPO examines the mark and enters it into the international register, it notifies the national trademark offices in which protection has been requested.

They subsequently decide whether to issue a Statement of Grant of Protection or refuse the application in their respective jurisdictions.

Unless there is a notice of refusal, the protection in the member country is the same as if the trademark had been issued by the national or regional IP office.

Another possible scenario is that you receive nothing from the designated office within the 12 months limit (or 18 months in some cases).

In this case, protection is considered granted.

What are the reasons to refuse trademark registration?

The intellectual property offices for the designated countries and/or regions each examine the International Registration sent by WIPO.

They can issue a notification of provisional refusal for their territory in whole or in part for reasons such as:

The mark conflicts with existing marks or other rights of a third party.
The mark lacks distinctiveness.
The mark is likely to cause deception.

The applicant can respond to objections, oppositions or provisional refusals based on the laws of the country and/or region.

Trademark management

How to manage international trademarks?

Intellectual property, like other property, should be managed.

With the Madrid Protocol, changes to the trademarks after registration can be reported and recorded in a single step, and the same is true for renewals.

Changes include issues such as the ownership of the mark and the name and/or address of the trademark holder.

Does the international trademark depend on the original one?

An international registration depends on the mark in the Office of Origin for a period of five years starting the date of its registration.

If, for any reason, the basic mark ceases to have effect, the international registration ceases to exist as well.

After the five-year period, the international registration becomes independent of the application or registration in the Office of Origin.

Then it can remain in effect upon the payment of applicable fees every 10 years.

Do I have to register through the Madrid System?

No.

Following the application or registration of your trademark in your Office of Origin, you can either use the Madrid System for international registrations or apply directly with the trademark office of each country where you are looking to obtain protection.

Trademark search and database

Is there an international trademark database?

The WIPO IP Portal offers the Global Brand Database and The Madrid Monitor.

You can perform a trademark search of either texts or images, including trademarks, appellations of origin, and official emblems.

The search is available in English, French, or Spanish.

What is the difference between the Global Brand Database and Madrid Monitor?

The Madrid Monitor is the best way to get the most updated information about your trademark and other trademarks registered through the Madrid System.

The Global Brand Database allows you to look for trademarks from the Madrid System and national or regional offices.

How to perform a search for trademarks?

Performing a trademark search on trademarks registered through the Madrid Protocol is highly recommended before filing an international trademark application.

The Madrid Monitor is a free and convenient tool and so is the Global Brand Database.

Using these resources to find similar or identical marks is helpful before filing an application.

How to use the Madrid Goods & Services Manager?

When filing an international trademark application, you must determine the list of goods and services to be covered by your trademark, just like you need to designate the countries and/or regions and pay the required fees.

The Madrid Goods & Services Manager helps to make that list based on the Nice Classification of Goods & Services, also known as the International Classification of Goods and Services for the Purposes of the Registration of Marks.

The Nice Classification is recognized in many intellectual property offices, and it helps with the international registration of trademarks.

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