Madrid Protocol

Madrid Protocol
Name	Madrid Protocol
Long name	Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
Signed	27 June 1989
Entered into force	1 December 1995
Parties	114 (approx.)
Administered by	World Intellectual Property Organization

Madrid Protocol is a multilateral treaty establishing a system for obtaining international trademark protection through a single application and registration mechanism. It complements the Madrid Agreement and operates under the auspices of the World Intellectual Property Organization in Geneva, providing a centralized procedure that links national and regional trademark offices to a common international register. The instrument affects practice at institutions such as the European Union Intellectual Property Office, the United States Patent and Trademark Office, and national offices across China, Japan, and Brazil.

History

The protocol emerged from negotiations influenced by developments in WIPO policy and prior instruments like the 1891 Madrid Agreement. Discussion involved delegations from the United Kingdom, United States, France, and Germany, as well as representatives from regional organizations including the European Union. The 1980s economic integration in markets such as the European Economic Community and trade liberalization under the World Trade Organization prompted reform to accommodate diverse national systems. Diplomatic conferences held in Madrid produced the text, reflecting input from trademark practitioners associated with firms in New York City, Tokyo, and São Paulo.

Objectives and Scope

The principal objective is to streamline international trademark filings by allowing an applicant to seek protection in multiple jurisdictions through one instrument filed with their Office of Origin and recorded by WIPO. The protocol’s scope covers substantive aspects of registration, including designation of contracting parties such as the Russian Federation and India, provisional refusals by offices like the Canadian Intellectual Property Office, and the effects of international registration on national titles administered by offices such as the Korean Intellectual Property Office. It does not supplant substantive law of member states, leaving examination and opposition procedures under institutions like the European Court of Justice and national courts.

Membership and Accession

Membership consists of States and regional organizations that have deposited instruments of ratification, acceptance, approval, or accession with WIPO. Parties include a mix of developed and developing economies such as Australia, South Africa, Mexico, and China PR. Regional members include the European Union acting on behalf of its member states for matters under its competence. Accession procedures follow treaty law practice as applied by entities like the United Nations and are influenced by bilateral relations with major trading partners such as Canada and Switzerland.

Registration Procedure

An international application under the treaty is based on a basic application or registration before an Office of Origin, for example the United States Patent and Trademark Office or the UK Intellectual Property Office. The application designates contracting parties where protection is sought, triggering recording in the International Register maintained by WIPO. Offices such as the European Union Intellectual Property Office and the Japanese Patent Office may issue provisional refusals within specified time limits, after which international registrations can be considered granted or refused. Renewal, assignment, and transformation procedures interact with national systems like the Office for Harmonization in the Internal Market (historical) and successor institutions.

Legal Effects and Rights Conferred

An international registration creates a bundle of rights that depend on national law as applied by courts such as the Supreme Court of the United States or tribunals in Germany and France. The record in the International Register evidences entitlement, but substantive trademark rights arise through the legal regimes of designated Parties including China and India. The protocol provides mechanisms for recording changes in ownership and for handling revivals and cancellations, which affect enforcement before courts like the High Court of England and Wales and agencies such as the U.S. Trademark Trial and Appeal Board.

Administration and Governance

Administration is vested in WIPO's International Bureau, which maintains the International Register and publishes the International Trademark Gazette. Governance involves periodic assemblies of parties, where delegations from entities like Brazil and South Korea debate amendments, fee schedules, and procedural guidelines. Technical cooperation and capacity-building efforts link WIPO programs with national offices in regions overseen by organizations such as the African Intellectual Property Organization.

Criticisms and Impact on International Trademark Practice

Critics point to asymmetries affecting small and medium enterprises in markets like Argentina and Kenya, and to complexities when national examination periods generate provisional refusals from offices such as the Canadian Intellectual Property Office. Commentators from law firms in London and New York City have noted tension between centralized filing convenience and the diversity of substantive law in jurisdictions like China and India. The protocol has nonetheless significantly influenced trademark strategy for multinational corporations including those headquartered in Germany, United States, and Japan, shaping filing portfolios, dispute resolution choices before bodies like the European Court of Justice, and licensing practices monitored by institutions such as the World Trade Organization.

Category:Treaties administered by the World Intellectual Property Organization