Under the Madrid Agreement, which became effective in 1892, a trademark owner that is a national of, or has a domicile in or a real and effective industrial or commercial establishment in, one of the member states, must first obtain registration for his mark in his country of origin. Utilizing this basic registration, the trademark owner may then file an application at a central bureau in Geneva, and obtain an International registration, the effects of which may be extended to some or all other member states, as designated by the trademark owner. The national extensions of the International registration are entitled to the same protection as registrations obtained under the member states' national trademark laws. Accordingly, requests for extension of an International registration take the place of national applications, thus making an International registration an alternative to separate national applications without the attendant national filing fees. The language of the central bureau is French, and International registrations issue in French.
Requests for extension of an International registration may be refused by a national trademark office only on the same grounds as a national application and are deemed registered if not rejected by the national trademark office within 12 months of receipt. Requests for extension may also be rejected as a result of national opposition or cancellation proceedings commenced during this 12-month period. International registrations under the Madrid Agreement have a registration term of 20 years, renewable for like terms, thus saving the registrant the expense of renewing separate national registrations. However, if the basic registration on which it is based should be cancelled or lapse or be modified in any way within the first 5 years following registration of the International registration, the International registration and all national extensions thereof will also fail or be likewise modified. International registrations may be assigned only to those parties that are entitled to apply for such registrations, and assignments must be recorded with the central bureau. An International registration can be assigned in respect of all countries to which it has been extended, saving recordal costs in each of the individual countries.
The Madrid Agreement did not find universal acceptance, and the Madrid Protocol was therefore proposed with a view to attracting more nations (principally the European countries and the United States that were not party to the Agreement) to join the Madrid system by liberalizing the conditions under which an International registration could be obtained and ameliorating some of its harsher requirements and provisions. The Protocol differs from the Madrid Agreement in several notable respects, as summarized below.
1) Under the Protocol an application for an International registration may be based either on a trademark application or on a registration in the applicant's country of origin.
2) The European Union is proposed to be one of the jurisdictions to which territorial extension of an International registration may be extended, as a result of which a Community Trademark application or registration may serve as a basis of an application for an International registration.
3) The language of the application may be either English or French and fees may be paid in the applicant's home currency.
4) National trademark offices must notify refusal of extensions within 12 months of receipt of an International registration, but may do so within 18 months if a member state has declared its intention to give notice of refusal. A mark not refused within this time is deemed registered. Requests for extension may also be rejected as a result of national opposition or cancellation proceedings commenced during the respective 12- or 18-month periods.
5) International registrations under the Protocol have a registration term of 10 years, renewable for like terms.
6) As under the Madrid Agreement, if the home application or registration on which an International registration under the Protocol is based should be cancelled, lapse, or be modified within the first 5 years following registration of the International registration, the International registration will also fail or be likewise modified. However, in contrast to the Agreement, under the Protocol, the registrant may elect to convert the national extensions of the failed International registration to national applications in accordance with the national laws of the jurisdictions designated under the International registration, thereby retaining the priority date of the International registration.
2) The European Union is proposed to be one of the jurisdictions to which territorial extension of an International registration may be extended, as a result of which a Community Trademark application or registration may serve as a basis of an application for an International registration.
3) The language of the application may be either English or French and fees may be paid in the applicant's home currency.
4) National trademark offices must notify refusal of extensions within 12 months of receipt of an International registration, but may do so within 18 months if a member state has declared its intention to give notice of refusal. A mark not refused within this time is deemed registered. Requests for extension may also be rejected as a result of national opposition or cancellation proceedings commenced during the respective 12- or 18-month periods.
5) International registrations under the Protocol have a registration term of 10 years, renewable for like terms.
6) As under the Madrid Agreement, if the home application or registration on which an International registration under the Protocol is based should be cancelled, lapse, or be modified within the first 5 years following registration of the International registration, the International registration will also fail or be likewise modified. However, in contrast to the Agreement, under the Protocol, the registrant may elect to convert the national extensions of the failed International registration to national applications in accordance with the national laws of the jurisdictions designated under the International registration, thereby retaining the priority date of the International registration.
As reported in our June 1994 Newsletter, the United States has refused to sign the Madrid Protocol in its present form, due to the extension of voting rights in the Madrid Union to intergovernmental organizations, such as the European Union. As a result, United States companies or individuals are unable at this time to take direct advantage of the Protocol. However, the following countries are at present members of the Protocol:
China (PRC) | Finland | Spain |
Cuba | Germany | Sweden |
Denmark | Norway | United Kingdom |
