By Jennifer Song / Senior Associate
The Madrid Protocol System allows you to file trade mark applications in a number of jurisdictions through one Madrid Application. In most instances, it will be cheaper to file in numerous countries/jurisdictions via the Madrid Protocol System as opposed to filing separate national trade mark applications.
The World Intellectual Property Office (WIPO) administers the Madrid System. The details of all pending/registered Madrid Applications (and registrations, called “International Registrations”) can be accessed via its online portal called the Madrid Monitor: https://www3.wipo.int/madrid/monitor/en/
The Madrid Application must be based on a national trade mark that has already been filed or registered (typically an Australian trade mark for Australian applicants). A Madrid Application is then filed via WIPO designating the various jurisdictions that are party to the Madrid Protocol.
The list of 130 jurisdictions/countries that are party to the Madrid Protocol can be viewed at: https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/madrid_marks.pdf
Notably, some groups of countries can be claimed as one designation. These include the European Union (which covers all members states of the EU including the Benelux countries), the OAPI (African Intellectual Property Organisation (which covers Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Republic of the Congo, Côte d’Ivoire, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo).
Though one Madrid Application can designate up to 130 juridictions, each jurisdiction will examine the particulars of the trade mark application. If there are issues raised via an examination report (or “Office Action”) during examination, a trade mark attorney/lawyer will need to be engaged in that jurisdiction/country and will need to respond to the examination report.
Once registered, the International Registration requires renewal every 10 years and can be done via the WIPO online portal. All designations can be renewed with the click of a button!
However be warned – in many instances and in certain jurisdictions like China, lodging a direct national trade mark can be a much better choice than lodging via the Madrid Protocol.
If you have any questions, please do not hesitate to contact us.