Séverine E. Mas Avocat

Madrid System for the International Registration of trademarks

Introduction to the International trademark registration system

The Madrid system of international registration of trademarks is applicable among the countries party to the Madrid Agreement or to the Madrid Protocol. This system gives the trademark's owner the possibility to have his trademark protected in several countries by simply filing one application at a single Office, in one language, with one set of fees, in one currency (Swiss francs).

An international registration produces the same effects as an application for registration of the trademark made in each of the countries designated by the applicant. If protection is not refused by the trademark Office of a designated country within a specified period (12 or 18 months), the protection of the trademark is the same as if it had been registered by the national Office.

The Madrid system simplifies greatly also the subsequent management of the trademark, since it is possible to record subsequent changes (such as a change in ownership or a change in the name or address of the holder) or to renew the registration through a simple single procedural step with the International Bureau of WIPO. Further countries may be designated subsequently. However : The system allows to register only trademarks already protected in the country of origin. In fact, the Madrid Agreement and Madrid Protocol are parallel but independent treaties.

Dependence on the Basic trademark

For a period of five years from the date of its registration, an international registration remains dependent on the trademark registered or applied for in the Office of origin. If, and to the extent that, the basic registration ceases to have effect, whether through cancellation following a decision of the Office of origin or a court, through voluntary cancellation or through non-renewal, within this five-year period, the international registration will no longer be protected. Similarly, where the international registration was based on an application in the Office of origin, it will be canceled if, and to the extent that, that application is refused or withdrawn within the five-year period, or if, and to the extent that, the registration resulting from that application ceases to have effect within that period.

Duration of Registration; Renewal

An international registration is effective for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees. The International Bureau sends a reminder to the holder and to his representative (if any) six months before renewal is due. The international registration may be renewed in respect of all the designated Contracting Parties or in respect of only some of them. It may not however be renewed in respect of only some of the goods and services recorded in the International Register; if therefore the holder wishes, at the time of renewal, to remove some of the goods and services from the international registration, he must separately request cancellation in respect of those goods and services.