In an earlier post, we explained the Madrid System for the International Registration of Marks, which is made up of the Madrid Protocol and the Madrid Agreement. These both establish an administrative process which allows the registration of trademarks in multiple countries by using a single trademark application.
It should be stated at the outset that Australia is not a signatory to the Madrid Agreement, and therefore it is not open to be used by most Australian-based clients. This post is written for clients who have a presence overseas in a country or region which is a member of the Madrid Agreement.
1. The Rising Importance of the Madrid Protocol
Although almost 100 years younger than the Madrid Agreement, the Madrid Protocol has rapidly overtaken its precedessor in importance.
As at the date of writing, there are 81 signatories to the Madrid Protocol, which easily outstrips the 56 signatories to the Madrid Agreement. Of the 56 signatories to the Madrid Agreement, only 3 have failed to ratify the Madrid Protocol: Algeria, Kazakhstan and Tajikistan.
In contrast, there are quite a few countries which are members of the Madrid Protocol without being members of the Madrid Agreement. These include:
- The European Union (as a collective body)
- The United Kingdom
- The United States
Further, where a party is bound by both the Madrid Agreement and the Madrid Protocol, only the provisions of the Protocol apply from 1 September 2008 and onwards.
2. Differences between the Madrid Protocol and the Madrid Agreement
a. Disadvantages of the Madrid Protocol
Use of the Madrid Protocol is slightly less advantageous for applicants than the Madrid Agreement in the following areas:
- Longer Refusal Periods: The national trademark offices can refuse to register a Protocol application 18 months from the application date (and longer in the case of refusals based on oppositions) whereas they only have 12 months under the Agreement
- Higher Fees: The fees for Protocol Applications are slightly higher than for Agreement Applications, although they are still much less than filing direct national applications
b. Advantages of the Madrid Protocol
Importantly, the Madrid Protocol has introduced a number of advantages for trademark owners. These include:
- Language: Madrid Agreement Applications must be in French, whereas Protocol Applications may be in French, English or Spanish (which is obviously an advantage in non-French speaking jurisdictions
- Timing: Protocol Applications can be based upon either an existing trademark registration or a pending application, whereas Agreement Applications can only be based on existing registrations. Therefore, international protection can be sought at a much earlier stage;
- Coverage: As explained above, protection is available under the Protocol in some 25 additional countries, including very important markets such as the United States, the United Kingdom and Japan; and
- The Presence of a “Plan B”: If the basic trademark application is refused, withdrawn or cancelled, a Madrid Protocol registration can be converted into national applications without losing the original filing date (although this is quite expensive).