The Madrid Protocol is a treaty administered by the International Bureau of the World Intellectual Property Organization (“WIPO”). It provides a mechanism whereby a trademark owner who has an existing trademark application or registration may obtain an international registration for their trademark from the WIPO, which is extended to member jurisdictions.

Two treaties govern the Madrid system of international registration of trademarks:

  • The Madrid Agreement Concerning the International Registration of Marks, (1891); and
  • The Protocol relating to the Madrid Agreement, operational since April 1, 1996.

How to file for international registration under the Madrid Protocol

Applicants for registration must:

  • Already have an existing application or registration of a trademark in Australia;
  • Satisfy the ‘entitlement requirement’ in Australia;
  • Make sure the mark is the same on both the Australian trademark and the application for the international trademark; and
  • Be the same person on the domestic trademark register, and not some other person.

How long is the registration process, and what is its term?

An international registration is normally issued in around 3 months.  For an application to receive confirmation and subsequent national registration it can take around 18 months. International registrations are valid for ten years from the date of receipt of the application.

What is the examination process?

Once an international registration has been issued, the Bureau will notify the trademark office of each contracting party to the request for an extension of protection to that country/jurisdiction. After the initial examination, the relevant national registration requirements will need to be met. Following this, protection will be granted.

What is the actual protection given to a member country?

The protection enjoyed by the owner of an International Registration is identical to the protection that would result from a national registration with the trademark office of a contracting party to the Protocol. It is reflected in the issuance of a Statement of Grant given to the applicant. Some members, such as Australia, Japan and the United States, also issue a formal registration certificate.

What are the advantages of using the Madrid Protocol?

  • The Madrid Protocol eliminates the high filing costs typically associated with filing a separate national application in each country/jurisdiction in which protection is sought. Additional cost savings are made at the post-registration stage;
  • The Protocol can be used as an economic way of securing trademark protection in the jurisdictions of many countries;
  • The time limits for objections to be made to trademark application are 12 or 18 months. In Australia the window of opportunity is only two months. This means that the window of opportunity to challenge an International Registration application is much greater.
  • Small and medium-sized firms looking to expand their markets overseas may also benefit from lower transaction and compliance costs associated with registering and maintaining trademarks using the Madrid Protocol.

Conclusion

If you want to register your trademark in different countries and increase its protection, then you ought to apply for a trademark registration under the Madrid Protocol. Not only will your trademark benefit from added protection, but you’ll also have international recognition in member states. Contact LegalVision on 1300 544 755 and speak with our trademark specialists today! We would be happy to answer any of your questions regarding registration of your trademark domestically or internationally.

Lachlan McKnight

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