The Madrid Protocol streamlines international trademark registration, allowing applicants to file in multiple countries through a single application. This process, managed by WIPO, offers cost savings and simplified management, but has limitations like the risk of central attack and language restrictions.

While the Madrid System operates alongside national trademark systems, it relies on them for basic applications and examinations. Countries apply their own laws when reviewing international registrations, with rights granted being equivalent to national registrations.

Madrid Protocol: International Registration Process

Process of Madrid Protocol registration

• File basic application or registration in member country (office of origin) must be identical to international application
• Submit international application through office of origin in English, French, or Spanish
• Office of origin certifies and forwards application to WIPO
• WIPO examines application for formalities ensuring required information and verifying classification of goods/services
• WIPO registers mark, publishes in WIPO Gazette, and notifies designated countries
• Designated countries examine mark according to national laws within 12 or 18 months
• Mark protected in countries not refusing within time limit (US, EU)

Benefits vs limitations of Madrid System

• Benefits: Single application process for multiple countries saves costs (filing in 10+ countries), centralized management, ability to add new countries later (territorial extension), simplified renewal process
• Limitations: Dependence on basic application/registration for 5 years risks central attack, limited to member countries (not Brazil), no unified examination process, language restrictions for WIPO communications (English, French, Spanish)

WIPO's role in Madrid System

• Processes international applications, maintains International Register of trademarks
• Publishes registered marks in WIPO Gazette, notifies countries of new registrations/renewals
• Handles territorial extension requests, manages renewal process
• Provides information/resources on Madrid System
• Develops/maintains online tools (Madrid Monitor, Madrid Goods & Services Manager)

Madrid Protocol and national systems

• Operates alongside national systems, based on national application/registration
• Designated countries apply national laws for examination, refusals, oppositions, cancellations
• Rights granted equivalent to national registration
• Changes to international registration affect national registrations
• National offices communicate with WIPO on mark status
• Transformation allows conversion of cancelled international registration to national applications
• Replacement allows international registration to supersede national registrations (older rights maintained)