Managed by the World Intellectual Property Organisation (WIPO) based in Geneva, the Madrid System simplifies the application process for a trade mark registration when concerned are multiple foreign jurisdictions. It enables the applicant to designate various foreign countries in a single international application that they can file with their local Trade Marks Office.

 

Entitlement and ‘Base’ Mark

 

The Madrid System is available to anyone who is a national or is domiciled in a country party to the Madrid Agreement or Madrid Protocol. The requirement for entitlement is then followed by a requirement for a base mark in the applicant’s home country (the country the applicant is claiming entitlement from). The base mark / registration will then form the foundation for the international registration, at least for the first 5 years. It will also determine which jurisdictional office the filing can be made from. This becomes known as the Office of Origin. Notably, an EU trade mark registration can be a ‘home’ or ‘base’ registration for an international application, making the EU IPO the Office of Origin.

 

Other Elements

 

Unlike the EU System, the Madrid System is not unitary, enabling the applicant to ‘pick and mix’ the countries they wish their registration to designate. Currently the Madrid System covers 99 countries, including the EU. Countries that are not members include Canada, Argentina, Brazil, Kosovo, Nigeria, South Africa, Saudi Arabia, the United Arab Emirates, Hong Kong, Indonesia, Taiwan, and Papua New Guinea. Thailand has been the latest addition, actively a member from November 7^th, 2017.

Although the Office of Origin determines the filing language of the application, the three administrative languages of the Madrid System are English, French and Spanish. The type of mark in the international application must reflect that of the base mark. Notably, series marks are not available in the Madrid System, but, in addition to ‘ordinary’ trade marks, permissible are 3D, sound, collective and certification marks.

WIPO are the gatekeepers for the International Classification System. In line with that the Madrid System uses the latest edition of the Nice Classification System and accommodates for multi-class applications. It is important to have in mind that the classes listed in an international application must be the same or narrower than those listed in the base mark registration.

An applicant can also claim a priority date for their international trade mark registration so long as they do so within 6 months of filing for their ‘base mark’. The International Registration, commonly abbreviated to ‘IR’, will then be valid for an indefinite period of time, so long as it is renewed every 10 years with renewals being made directly to WIPO. However, additional maintenance may be required due to individual criteria within a national jurisdiction and these may often concern evidential submissions showing that the trade mark is being put to use.

 

Subsequent Designations

 

The Madrid System also provides for the later addition of new countries as designations for the trade mark. This does not have an impact on the content of the registration. WIPO will forward the details of the trade mark to the newly designated country and the usual examination, and opposition period will commence, while the mark remains active in its current designations.

 

“Central Attack” & Transformation

 

The requirement by the Madrid System for a ‘base’ mark requires that an IR is dependent on the ‘base’ mark for the first 5 years. If the ‘base’ mark remains active within that period, the IR can take on a life of its own and will no longer be dependent on a home registration. If however the ‘base’ mark is allowed to lapse or is successfully challenged and lost, the IR will be removed from the International Register. This is how the term ‘central attack’ is formed, as without the ‘base’ mark the IR cannot exist if it is in its first 5 years.

In the event that the ‘base’ mark is lost in the dependency period, the designations of the IR can be transformed into separate national applications. The transformation must be filed for within 3 months of loosing the IR. The national registrations will then retain the registration date of their previous international registration.

 

Pros & Cons

 

The clear benefit of using the Madrid System is that an applicant can cover multiple foreign jurisdiction by filing a single application, with one set of fees and at the convenience of their local Trade Mark Office. Renewals are also simplified as a single renewal of the IR which will extend to all countries privy to the trade mark. The System is also not unitary so opposition in one country will not affect any of the other designated countries. Neither is the System static, as an applicant can subsequently add new countries to their registration, whilst having a growing list of member states to chose from.

On the flipside, an applicant cannot assign his registration to nationals or organisations outside the Madrid System. Neither can he claim a registration on the grounds of established use of the trade mark. The requirement of a ‘base’ mark, and that the IR does not exceed the specification of the ‘base’ mark, is a limitation on the IR. But most importantly, in the first 5 years of its registration the IR is vulnerable to a ‘central attack’ of its ‘base’ mark. Other disadvantages, such as cost increase in the case of national objections, differing national maintenance procedures and enforceability doubts are commonly shared by any route of trade mark protection.

 

Closing Thoughts

 

The Madrid System has provided a single administrative process for the registration and management of trade marks on a global scale. Although the system has been in place since 1891, it is only around 1986 that the Madrid Protocol was introduced and the system could actively start fulfilling its potential. Today it is perhaps the most valuable system in the history of international trade mark law.