The Madrid System

The Madrid Agreement and the Madrid Protocol together form the Madrid System for the International Registration of trade and service marks in the relevant Contracting States (.pdf version). The System is operated under the auspices of the World Intellectual Property Organisation (WIPO).

Applications for registration must be filed with WIPO via the national office of an applicant's country of origin, and must be based on an existing basic registration (in the case of an Agreement or Protocol country of origin) or on a pending basic application (in the case of a Protocol country of origin only) in the country of origin. Where the country of origin is a member of both the Agreement and the Protocol, the rules of the Agreement prevail. Applications made under the Agreement must be filed in French. Applications made under the Protocol may be filed in either English and/or in French, depending on which the national office in the country of origin allows.

A single application may be filed for goods and services in multiple classes and designating multiple contracting states. If the country of origin is party to both the Agreement and the Protocol then any contracting state of either may be designated. If the country of origin is party only to one or the other of the Agreement or the Protocol then only contracting states to the Agreement or to the Protocol respectively may be designated. Thus, presently, applications filed in the UK may only designate contracting states to the Protocol.

After WIPO has checked that an application meets specified formal requirements, it is passed to the designated national offices for national approval. Each national office has the right to refuse an international application on the same grounds as it might refuse any corresponding application filed directly. Grounds for such refusal must be notified to WIPO within 12 months of the national office receiving the application (where the designated country is a member of the Agreement) or within 12 or 18 months (for Protocol countries - depending on whether or not the Protocol country concerned has opted to apply the longer period). If no grounds for refusal are notified within the relevant period, then the application is deemed to be registered in that country (except where a contracting state provides for rejection after 18 months on the basis of an opposition).

Advantages

Unless grounds for refusal are notified, it is not necessary for an applicant to appoint any local representative or arrange for translations into the applicable local language (if not French or English) in any designated country. This can lead to a substantial saving in costs by using the Madrid System rather than making separate national filings.

International registrations are subject to payment of renewal fees every tenth anniversary from the original filing date (technically, Protocol registrations run for ten-year periods, whilst Agreement registrations run for twenty, but in the latter case renewal fees must be paid in instalments every ten years, so the effect is the same). All renewal fees due in respect of designated states are payable directly to WIPO, which simplifies the renewal process in comparison with the renewal of multiple, individual national registrations.

Additionally, once an international application has been filed it is possible to file a request for subsequent designation to extend protection to other contracting states, not originally designated.

Disadvantages

An applicant (and a subsequent assignee) must have effective business establishment in, domicile in or be a national of, a contracting state. The specification of goods and services in the international application must be consistent with the goods and services specified in the basic registration/application.

For 5 years from the date of registration, an international registration is dependent on the status of the basic registration/application. Where the Agreement prevails, if the basic registration is itself revoked or lapses within the 5-year period, then the corresponding international registrations in all designated states are also automatically revoked. Where the Protocol prevails, if the basic application is lost then the international registrations are also lost, but the applicant has a limited right to transform the international application into separate national applications in the designated states.

Madrid Agreement   Madrid Protocol   Common Regulations   WIPO Guide   All Contracting States

Contracting States in Europe

Madrid Agreement only 

Madrid Protocol only

Both