Tue 07 Feb 2023

International trade mark protection: A general guide to the Madrid Protocol

What is the Madrid Protocol?

The Protocol is a centralised international trade mark registration system that eases trade mark protection across multiple countries using just one application. It is administered by the International Bureau of the World Intellectual Property Organisation (WIPO). Protection (International Registration) can only be obtained for countries and regions which have joined the Protocol (Member Countries or Members). The applicant only needs to complete one application form in one language and pay one set of fees.

It is worth noting that that this process does not create one ‘global’ trade mark that operates across the multiple countries selected. Instead, the one application operates to register separate trade marks in each of the designated countries.

Who are members of the Protocol?

As of November 2022, the Protocol has 113 Members, covering 129 countries, including the UK, the USA and China. The full list of Member Countries can be accessed via the WIPO website here.

There are also three regions which can be designated in an International Registration under the Protocol. The first is Benelux, comprising Belgium, the Netherlands and Luxembourg. The second is the European Union. The third is the African Intellectual Property Organisation (OAPI), comprising of 18 African countries which cannot be designated separately and for which stand-alone national applications cannot be made, as the countries only offer protection through the OAPI.

Who can apply for International Registration?

International Registration can only be obtained if (1) you are domiciled or have your regular place of business in one of the countries or regions which have joined the Protocol, and (2) you are the holder (or representative) of a trade mark application or registration in your ‘home’ country.

As the UK is a Member Country, any UK citizen and any UK legal entity that holds, or has applied for, a trade mark in the UK can make an application for International Registration under the Protocol.

How does the Madrid Protocol application process work?

(i) What can you apply for?

Applications for International Registration are based on existing applications in the applicant’s home country. For those in the UK, this means that any mark that would be acceptable in the UK, and as many classes of goods/services as in your home application, can be applied for.

(ii) How do you apply?

To submit an application for International Registration through the Protocol, you must first file a standard trade mark application with your home country’s trade mark office (Office of Origin) An application for International Registration which is based on the ‘home’ application can then be filed.

For those in the UK, you must first apply for a UK trade mark with the UK Intellectual Property Office. Once this application is made, you are then free to apply for an International Registration which will correspond to your UK application. The international application is also filed through the UK Intellectual Property Office, who will review the details of your ‘home’ application and forward the application to the WIPO. International Registration applications can be filed in English, French or Spanish.

(iii) International review

The WIPO then reviews the international application, registers its details and sends it to each of the trade mark offices of the countries indicated on the application. Each national office then individually reviews the application and decides whether to grant the trade mark in its country. Some of the grounds on which your application will be reviewed include potential conflicts with pre-existing rights, whether the mark is distinctive, whether it is contrary to morality/public order, and whether it could cause deception. If your application fails in a particular territory, this does not have an effect on other territories.

How much does it cost?

There is a basic fee of 653 Swiss francs payable for the actual application itself. This fee is higher if your mark needs to be reproduced in colour. There is also a complimentary fee for each Contracting Party designated, the value of which is different for each country. On top of the basic and complimentary fees, there is also a supplementary fee for each class of goods and services in excess of three, which again differs between countries.

The WIPO has created a fee calculator to estimate the cost of registering your mark through the Protocol. To access the calculator, please click here.

How often do you have to renew your application?

International Registrations must be renewed every 10 years.

Can you transfer your rights?

International Registrations can be freely assigned to parties that are domiciled or have a connection to a Member Country. You cannot transfer an International Registration to a party that is based solely in a non-member country, such as South Africa or the United Arab Emirates.

What are the advantages of using the Madrid Protocol?

Using the Protocol offers a range of benefits, including:

  • A streamlined and centralised application process, which frees applicants from the inconvenience of having to appoint a legal representative in each of the countries in which protection is sought.
  • Cost-effective prices, which are generally cheaper than filing multiple national trade marks separately in each country.
  • Applications and communications can all be completed in English, which minimises the risk of translation issues arising.
  • If the mark is refused in one country, this does not automatically affect its validity in other countries.
  • You can make further designations in other member countries at a later date.
  • A fixed examination period of up to 12 or 18 months, allowing you to plan international expansion without delay in the trade mark application process.
  • International trade mark protection of 10 years and an easy renewal process.

What are the disadvantages of using the Madrid Protocol?

Though there are many reasons to use the Protocol when applying for trade marks internationally, you should also consider the possible disadvantages. For example;

  • If you do not have a trade mark application in your home country, you cannot use the Protocol to apply internationally;
  • The trade mark filed in other countries will be limited to the details and extent of your ‘home’ mark and cannot be broader in scope;
  • Objections may be raised by national trade mark registries designated in your International Registration or by third parties. This will require you to instruct overseas agents and this may negate cost savings of using the Protocol.
  • The risk of what is known as “central attack”. If the home application / registration on which the International Registration is based is subject to a successful challenge within the first five years of the date of the International Registration (such as refusal or cancellation), the International Registration will be subject to the same effect.
  • Ownership of the mark cannot be transferred to anyone who is not domiciled / has a place of business in a Member Country.
  • Not all countries are members of the Protocol, so if you would like protection in any non-member countries, you will need to file a separate application directly.
  • There are some practical issues with enforceability actions in many African countries.

Key Takeaways

If you are a UK brand owner looking to register a trade mark in multiple countries or expand your business, the Protocol has the potential to provide a convenient, cost-effective and streamlined way of achieving international trade mark protection. It offers a ‘one stop shop’ for application and management and ultimately can simplify your experience when protecting your brand in multiple countries. However, whether the Protocol is the best route for you depends on what your brand is trying to achieve, your overall goals and the likelihood of successfully registering your brand in your selected countries. It is therefore important to consider your strategy and seek professional advice if you are considering a Protocol application.

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