Madrid Protocol

In this article, we’ll explain what the Madrid Protocol is, how it works, and its pros and cons for businesses looking to expand internationally.

What is the Madrid Protocol?

The Madrid Protocol is an international treaty that allows trade mark owners to apply for protection in multiple member countries using a single application. Administered by the World Intellectual Property Organization (WIPO), the Madrid System streamlines the process of securing trade mark rights across borders.

Currently, there are over 100 member countries in the Madrid System, including major economies such as the United States, the European Union, China, Japan, and Australia.

How the Madrid Protocol Works

To file an international trade mark application under the Madrid Protocol, you need to have already registered or applied for a trade mark in your home country – in this case, the UK. This is known as your “basic application” or “basic registration”.

Here’s a step-by-step guide to the process:

1. File Your UK Trade Mark

Your first step is to ensure you have a UK trade mark application or registration in place. This forms the foundation for your international application.

2. Submit an International Application

Once you have your UK trade mark, you can submit an international trade mark application through the UK Intellectual Property Office (UKIPO). The UKIPO acts as the Office of Origin and will certify the details of your UK trade mark before forwarding the application to WIPO.

Your application must specify:

• The countries or regions where you want trade mark protection (called Designated Contracting Parties).
• The same goods and services covered in your UK application (or fewer).

3. Examination by WIPO

WIPO reviews the international application for formalities, such as ensuring the information is correct and fees are paid. If everything is in order, the trade mark is recorded in the International Register and published in the WIPO Gazette of International Marks.

WIPO then forwards the application to each of the designated countries for their local examination process.

4. National Examination in Each Designated Country

Each country you’ve designated will examine your trade mark according to its national laws. This step is crucial because approval or refusal depends on the laws and prior trade marks within that specific country.

• If no objections are raised, your trade mark will be protected in that country.
• If there are issues (e.g., conflicts with existing marks), the local trade mark office will notify you, and you can respond or make amendments.

5. Registration

Once approved, your trade mark is registered in each designated country, providing you with international protection. The trade mark is valid for 10 years and can be renewed centrally through WIPO.

Pros of Using the Madrid Protocol

1. Streamlined Process
The Madrid Protocol allows you to file a single application in one language (English, French, or Spanish) and pay a single set of fees to seek trade mark protection in multiple countries. This significantly simplifies the international trade mark process.

2. Cost-Effective
Filing one international application is far less expensive than submitting separate trade mark applications in each individual country. You save on translation costs, local agent fees, and administrative expenses.

3. Centralised Management
Through the Madrid System, you can manage all your trade marks internationally from a single point of contact (WIPO). This includes renewals, changes of ownership, or modifications to the trade mark.

4. Flexibility
You can expand the geographic coverage of your international trade mark later. For instance, if you initially apply for protection in the EU and the US, you can add other member countries over time through a process known as subsequent designation.

5. Recognition in Over 130 Countries
The Madrid Protocol covers a large number of key markets, making it a powerful tool for businesses looking to grow globally.

Cons of Using the Madrid Protocol

1. Dependency on the Basic Trade Mark
Your international registration is dependent on your UK trade mark for the first 5 years. If your UK trade mark is cancelled, invalidated, or restricted during this period, your international registration will also be affected. This is known as “central attack”.

2. Local Examination Standards Differ
While WIPO processes the formalities, each designated country applies its own legal standards. This means your trade mark could face refusals, oppositions, or legal challenges in some countries, requiring local legal expertise to resolve.

3. Not All Countries Are Members
While the Madrid Protocol includes many key markets, some countries only recently joined or remain outside the system. You’ll need to file separate applications for non-member countries.

4. Limited Changes After Filing
Once the international application is filed, you cannot add new goods, services, or classes. You can only reduce the scope, so careful preparation is necessary.

5. No Guarantee of Approval
Designating multiple countries does not guarantee registration. Each country’s trade mark office can still reject your application based on its local laws and prior rights.

Is the Madrid Protocol Right for You?

The Madrid Protocol is ideal for businesses that:

• Are expanding internationally and need protection in multiple countries.
• Want a streamlined, cost-effective way to secure trade mark rights abroad.
• Already have a UK trade mark registration as their home base.

However, if your business only plans to operate in a few key markets, you might consider filing trade mark applications directly in those countries instead.

Conclusion

The Madrid Protocol offers UK businesses a powerful tool for securing trade mark protection in international markets. By leveraging your UK trade mark registration, you can file one international application to seek protection in over 100 member countries, saving time, effort, and money.

However, it’s important to consider the system’s limitations, such as the dependency on your UK trade mark and the variability of local examination processes. For businesses with global ambitions, the Madrid Protocol is an efficient way to protect your brand and secure your place in the international market.

We can help you pull together a strategy for overseas protection – please drop us a email and we will be in touch!