THE MADRID PROTOCOL
SYSTEM
AIPPI (Hyderabad 2011)
Regina Quek
One Legal LLC
Background
The system of international registration of marks is
governed by


the Madrid Agreement (1891) and
the Protocol - adopted in 1989, entered into
force on December 1, 1995, and came into
operation on April 1, 1996.
- administered by the International Bureau of WIPO
The Madrid Protocol has now 84 members,
including the European Community (since
October 2004), Japan, South Korea, China and
USA
The Madrid system enables a trademark owner to
obtain protection for his trademark in several
countries by:

filing one application directly with his national or
regional trademark office,

paying application fees in a single currency
The quantum of fees in each application would of
course depend on the number of countries and
classes designated in that application
An international registration is:

a bundle of national registrations as if filed directly
in the national or regional offices designated

same force and effect as a
registration in that jurisdiction.

In this regard it is different from a unitary
registration such as the Community Trade Mark.

Because it is a bundle of separate national rights –
it can be treated as such.
national/regional

A Madrid Protocol application may result in
different scopes of protection - in each country in
that protection may be refused (totally or
partially) by some of the designated Contracting
Parties

Protection may be more limited in some countries
than others

Protection may be renounced for only some of
the designated Contracting Parties

All the above without affecting rights in the other
designated countries

A Madrid Protocol application is also flexible in
terms of the ownership of the rights – in that
the rights in some countries may be separately
assigned to another party (i.e. eligible under
the rules of the MP) without affecting the rights
in other designated countries.

The rights are also to be separately enforced –
an action for infringement of an international
registration are to be brought separately in
each of the Contracting Parties concerned.
Madrid Protocol application:
An option that ought to be considered by both
trademark owners and practitioners as a
possible mode of obtaining multi-jurisdictional
protection of trademarks
Pre-Requisites to File an Application
Under Madrid Protocol
1. Entitlement to file
The Applicant must have the necessary connection
to a member of the Protocol, i.e. the Applicant
must:



.. be a national of
.. is domiciled in, or
.. have a real and effective industrial or
commercial establishment in a Contracting
Party to the Madrid Protocol.
In the present context - an Indian company will not
be entitled to file a Madrid Protocol application
unless it has a real and effective industrial or
commercial establishment in a member country,
e.g. Singapore.
This requirement applies to all co-Applicants and
assignees.
2. Basic Application or Registration

Basic pending application or granted registration
in a Contracting Party where the Applicant has
connection;
3. The Madrid Protocol Application Must Correspond to the
Basic Application/Registration

the mark in the Madrid application must be the
same as that in the basic application/registration;

the applicant of the Madrid applicant must be the
same as the proprietor of the basic
application/registration, and

the goods and/or services of the Madrid application
must be within the scope of the basic
application/registration
Effect:

Protocol route may not be suitable where different
language marks are used in different countries.

No series marks application available.

Affects ownership arrangements for trade marks –
for example within different companies in a Group

practices of the Office of Origin in examination of
specifications may affect scope of protection of the
mark in different jurisdictions
4. Dependence on Basic Registration /
Application

Dependency of an IR on the Basic Registration /
Application for a period of five years from the date
of its registration.
If, and to the extent that, the basic application or
registration ceases to have effect within this fiveyear period, the IR will no longer be protected.

This means - IR is vulnerable in this 5-year period
to a ‘central attack’ on the Basic application /
registration.

Transformation - The IR may be transformed
into national registrations in the event of a
successful central attack

After the expiry of this period of five years, the
international registration becomes independent
of the basic registration or basic application.
Limitations of the Madrid Protocol route
Some limitations inherent in the Madrid Protocol
system:

The proprietor of the IR must have necessary
connection to a Contracting Party to the Protocol.
This limitation will impact future exploitation
strategies of the owner for example in the
sale/assignments of his rights
 The effect of the requirement for and conditions
for Basic application or registration :• may limit strategies for ownership arrangements
within an organization;
• the law and practice of the Country of Origin may
have an impact on the scope of protection of the
mark in different jurisdictions.
• the system does not cater to simultaneous
registration of marks in different languages .
• vulnerability for a 5 year period to a central
attack on the Basic application/ registration.
Advantages of the Madrid Protocol
system

Administrative and procedural simplification and
cost savings
•
•
The Madrid system enables a trademark owner
to obtain protection for his trademark in
several countries
by filing one application directly with his
national or regional trademark office,
•
in one language, and
•
By paying one fee to one office
instead of
• filing separate applications
• in several countries;
• in different languages, and
• paying separate fees in separate currencies to each
trade mark office.

No local representative required in each
jurisdiction at the time of filing -> significant cost
savings for the Applicant

A local agent is required only when a refusal is
issued in a country i.e. prosecution costs only
incurred on a need- to basis

Administrative convenience - certain matters
such as recordals of changes, assignments,
limitations of goods and renewals can be effected
by recordals with the International Bureau as one
centralized body.

Please note however that all such recordals are
subject to national laws and contracting parties
may file a Declaration (within 18 months) that the
said transaction has no effect in respect of that
contracting party.

For example Singapore has filed a Declaration
that the recording of licenses in the
International Register has no effect in
Singapore – therefore licenses will still have to
record nationally in Singapore.
Cost savings:
But it will still mean that there is no need to
appoint local representatives in each country
unless necessary.


Speed of registration process:
The applicant - does not have to wait for a positive
response from the office of each contracting party in
which protection is sought. If no refusal is notified
by the trade mark office in a designated country
within the applicable time limit, the mark is
protected in the contracting party concerned.
This may result in a more rapid registration process
for countries where their usual processing time
exceeds 18 months.
For countries where the processing time is shorter
than the 12 or 18 months, the Madrid Protocol
system may actually mean a longer processing time.
SINGAPORE
Singapore acceded to the Protocol on 31 July 2000
and the Protocol came into force in the Republic
of Singapore on 31 October 2000.
Filing an International Application with
Singapore as the Country of Origin:
The application must be filed with IPOS.
 The relevant forms:
 Form MM2(E);
 IPOS Form MP3 (official form of the national office)
 MM 18 (E) Declaration of intention to use in USA

Payment:

national administrative fee (local currency)

international application fee payable to WIPO (in
Swiss Francs) consisting of:
•
•

basic fee
individual fees – the amount of these fees will vary with
the number of countries and classes designated. The fees
specified by each country will vary.
There is a fee calculator available on the WIPO
website that assists applicants in the calculation
of the fee payable.
Processing by IPOS

After receipt of an International Application IPOS
will:




send acknowledgement letter to applicant
conduct formalities check
notify applicant of irregularities ( if any)
send the IA to the International Bureau if it is in order,
and notify the applicant.
Processing by International Bureau

Where IA complies with requirements - recorded
in the International Register and published in the
WIPO Gazette of International Marks.

The IB notifies each Contracting Party in which
protection has been requested.

Each designated Contracting Party has the right to
refuse protection, within the time limits specified
in the Madrid Protocol.

Unless such a refusal is notified to the IB within the
applicable time limit, the protection of the mark in
each designated Contracting Party is the same as if it
had been registered by the Office of that Contracting
Party.

The time limit for a Contracting Party under the
protocol is 12 months unless specified to be 18
months e.g. Singapore

In the next slide – I am setting out the statistics for
IR applications received by Singapore.

The MP took effect in Singapore on 31 October 2000
Applns under
Total
Madrid
(according to class)
Protocol
13,021
Year
National
applns
1998
13,021
1999
15,753
-
15,753
2000
22,131
118
22,249
2001
13,749
6524
20,273
2002
11,623
8452
20,075
2003
12,815
8,472
21,287
2004
14,088
9,163
23,251
2005
14,950
12,036
26,986
2006
15,121
14,095
29,216
2007
16,560
15,600
32,160
2008
16,788
17,422
34,210
2009
2010
15,055
17,446
13,207
13,035
28,262
30,481
80,000
70,000
60,000
50,000
Total (according to class)
40,000
Applications received under
Madrid Protocol
30,000
National applications
20,000
10,000
0
1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010
International applications filed through
Singapore as office of origin
Year
No. of applications
2001
52
2002
50
2003
70
2004
92
2005
144
2006
169
2007
146
2008
164
2009
211
2010
181
ANALYSIS

There is a general trend toward an increase in
the total trade mark filings after the
implementation of Madrid Protocol.

There was a dip in national filings immediately
after the implementation of the MP and national
filings still hover at about the same level.

The greater increase is seen in the increase in
the number of Madrid Protocol applications
designating Singapore.
Practical lessons garnered
from the last 10 years

Japan has a 2-part fee. Efficient docketing is
necessary to ensure that the fee for the 2nd part is not
overlooked.

While there are costs savings under the MP – the cost
will be affected by currency fluctuation for applicants
who do not usually trade in Swiss Franc, for example
– the Swiss Franc has appreciated about 32% against
the USD in the last 12 months

Translation may be an issue for the designation in
China, Japan and Korea

China has a very short response time for their Refusals
and this is not extendible - “within 15 days from receipt
of this notification” or under local Chinese practice, it is
within 30 days from the issuing date of the WIPO’s
notice. So getting the assistance of Chinese counsel to
check when refusals are issued is a good idea.

Declaration of intention to use in USA must be filed if
USA is designated

Generally we have seen a trend in favour of using the MP
from our local clients.
THANK YOU
Q&A
Regina Quek
One Legal LLC