The International Trademark System: The Madrid System

Written by Anamaria Correal, Trademark Attorney 

We often speak with clients to reinforce the importance of having good practices in place to protect their intellectual property. For many companies and businesses, their IP will often be the most valuable thing that they own and develop, and will often even be the basis of the their entire business – this could be information, methods, or even just the image and brand of the company itself.

As your business starts to grow and expand internationally, it is important to contemplate and plan to protect your trademarks globally. Trademarks by nature are territorial, which means that they must be filed in each country where protection is sought. With this being said, the Madrid System is a convenient option for registering trademarks overseas, allowing the protection of a trademark in a large number of countries through a single application. 

The Madrid System 

The Madrid System is the primary system for the international registration of trademarks. Its main purpose is to simplify the international trademark procedure and reduce the costs of registering a trademark in different countries. The Madrid System is governed by two treaties, The Madrid Agreement (1891) and The Madrid Protocol (1989). The two treaties are independent of each other, and the State parties can adhere to either or both of them. They are administered by the International Bureau of the World Intellectual Property Organisation (WIPO).

The Madrid Protocol 

The Madrid Protocol is continually expanding; While it is still a mechanism unknown to many, it is an efficient way to manage international trademarks. The Madrid Protocol has multiple advantages including but not limited to allowing trademarks owners to cost-effectively register trademarks in multiple countries and jurisdictions that are contracting parties to the Protocol; permits filing one application with a single office in one language and paying one set of fees in one currency. Moreover, the renewal process is simplified as there is only one registration to renew. In addition, amendments after registration such as ownership, address, limitation of goods or services could be recorded in the designated contracting parties by a single procedural. 

Nevertheless, each country or contracting party has the right to determine whether or not protection of a trademark may be granted since their procedures and criteria are equal to an application not submitted via the Madrid Protocol.

Which countries are members?

The Madrid Union has currently 108 member countries and regions, representing 124 countries in total. While not every country is a member of the Madrid System, various States are taking all the necessary steps to adhere to the Madrid System. For instance, Chile is approaching possible implementation of the Madrid Protocol, with the discussion of the draft Agreement having begun in January 2021. Following this, on 9 March 2021, the Senate Foreign Relations Committee approved, with five votes in favour the Draft Agreement that approves the Madrid Protocol concerning with the International Registration of Trade Marks (Bol. No. 13929-10).

Conclusion

The Madrid System facilitates the expansion of your global trademark portfolio. While it is not possible to use the Madrid System to protect a trademark in countries that are not part of the protocol, even in non-party countries steps to adhere to the Madrid System have been taken, such as in Chile.

If you have questions about whether the Madrid System will be suitable for your business, get in touch with our expert IP team today.

 Harris Gomez Group is an English and Spanish speaking law firm with 25 years experience based in Sydney, with sister offices in Chile and Colombia. We specialise in business, technology and corporations law, property law, and cross-border issues. We assist individuals, entrepreneurs and small to large sized Australian businesses with a variety of issues, including corporations law, intellectual property, property law issues and contract disputes. We are members of both Australian Latin American Business Council (ALABC) and Auscham.

To better understand how we can support you, please contact Harris Gomez at [email protected]

Our Sydney office is located at Level 7, 92 Pitt Street, Sydney NSW 2000.