Happy Birthday! Last week (April 14, 2016) marks a milestone anniversary for the Madrid System: 125 years since its first governing treaty (the Madrid Agreement) was adopted in Madrid in 1891. In these 125 years many things have changed – in favour of all trade mark protectors around the world.
In 1891, the Madrid Union was comprised of nine founding members and has continuously grown over the years. For its 125th anniversary, the Madrid System is 97 member-strong, covers 113 countries and is expected to expand to encompass 100 members and beyond in coming years. Today more than ever, the Madrid System offers a convenient and cost effective solution for protecting your brand worldwide. In July 2015 the 1.25 Millionth Registration was made by a leading Indian Electronics Firm, Micromax.
What is the Madrid System?
The Madrid System’s aim is the protection of your trade mark in multiple jurisdictions around the world based on one application form that the applicant has to fill in. Although the Madrid System is organized as a centrally administered system, it is NOT to be understood as an international, unified registration. If you fill in an international application through the Madrid System (via the World Intellectual Property Organization, WIPO) it creates a bundle of national rights through an international registration able to be administered centrally in Geneva, Switzerland.
• In a nutshell: Advantages of the Madrid System
- One-for-All: One application to register for multiple jurisdictions.
- Cost-effective: Instead of paying fees in all the different countries, the applicant has a centrally administered system in which he pays the amount of the fees.
The amount you’ll have to pay can be calculated via the International Application Simulator. The fees have to be paid in Swiss franc.
- Time-savings: The International Application via the Madrid System does not only save money but time aswell. Instead of applying for every country, you’ll save time by applying only once.
- Filing in three languages: At the beginning you had to fill in your application in French. Since 1996 you can apply in English and since 2004 in Spanish.
- NOT universelly valid: Although it’s called an “International Application”, it is not valid across all countries in the world. Some of the largest trading nations such as the United States of America, Japan and Canada did not join the Agreement. One very important reason is the not-acceptance of a truely international “regime” regarding trade mark protection.
- Another disadvantage 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.
- Central attack: The process of attacking the basic application or basic registration is generally known as ‘central attack.’ Although it is extremely rarely, a successful attack could cancel or limit the protection of your trade mark. If that happens, the loss of protection can have the same extent that the home registration was cancelled or limited.
- (Not mandatory): The cost-saving could be negated by the requirement to use local agents in the applicable jurisdiction if any problems arise.
Future plans of the Madrid System
Madrid System operations continue to evolve, enhancing along the way the availability and effectiveness of electronic tools users of the System can refer to for information or in order to communicate with the Madrid Registry. Electronic application filing has made it increasingly easy for users to track and manage their international trademark registrations. Therefore WIPO will roll out “E-Madrid” to enhance customers’ online experience through new and improved E-Services.
Do you want to apply for an international trade mark protection?
Please do not hesitate to contact one of our attorneys if you want to apply for a trade mark protection via the Madrid System or if you have any questions left.
We would like to offer you a free call-back!
All images provided by WIPO.