The Madrid System facilitates cost-effective and global trademark registration in multiple countries through a single application to WIPO. The Madrid Protocol allows for simultaneous registration of pending trademarks, while the Madrid Agreement only allows for established trademarks. However, trademark infringement issues must be addressed through the legal system of the participating country, and changes to the basic application affect all jurisdictions.
Formally known as the Madrid System for the International Registration of Marks, the Madrid System facilitates the registration of marks in multiple countries – referred to as jurisdictions in intellectual property law – by providing a single, universally accepted course of action. By allowing trademark applicants to register with a central organization instead of registering with each individual country, the Madrid System is cost-effective and promotes globalisation. The World Intellectual Property Organization (WIPO) oversees the Madrid System under the terms of two treaties: the Madrid Protocol and the Madrid Agreement. Not all countries in the world are obligated to follow the Madrid System, and participating countries may be compliant with either or both existing intellectual property treaties. However, most of the world’s major economies, including China, the United States, the United Kingdom and Japan, are parties to one or both treaties.
When registering in the Madrid System, trade mark owners apply to WIPO for an international registration via a basic application. Then, through a procedure known as designation, the trademark owner can register the trademark in the participating countries of his or her choice. Additionally, the brand can be expanded at any time to cover existing member countries of new jurisdictions.
Two agreements determine the terms and scope of the Madrid System: the Madrid Protocol and the Madrid Agreement. The Madrid Protocol has more members agreeing to be bound by its terms than the Madrid Agreement. One of the main reasons for this is that the Madrid Protocol allows for the simultaneous registration at WIPO of pending trade marks, not yet recognized in the country of origin. If the country where the trademark is pending accepts the trademark application, the trademark automatically registers with other countries while the Madrid Agreement only allows for international registration of already established trademarks. Furthermore, the Madrid Protocol gives each individual country the right to determine whether or not the trademark owner’s request for protection will be accepted in that territory.
However, the Madrid system has some shortcomings. If trademark infringement issues arise in a particular participating country, the trademark owner may need to use that country’s legal system instead of filing a complaint through WIPO. Furthermore, the terms of the basic application apply to all countries and any changes made to the basic application affect the status of the mark in each jurisdiction. This requirement is quite strict and prevents brands from being customized for specific countries.
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