Madrid Protocol

Feb 5, 2015

Benefits of the Madrid System

The Madrid System for international registration of marks has advantages for the trademark owner, for national economies and governments, as well as for professionals, like agents and attorney in the field of trademarks. Trinidad and Tobago is not yet a party to the Madrid Protocol.  Accession to this Protocol will take place upon the passage and Acclamation of the  Trademark Bill 2015.

Benefits for the Trademark Owner
The Madrid System allows companies and individuals to obtain and maintain protection for their marks in an ever-increasing number of countries by means of a simple and economical procedure.

International registration has several advantages for the owner of the mark. After registering the basic mark, or filing an application for registration, with the Office of origin, he has only to file one international application, in one language, and pay one fee, in one currency (Swiss francs). This simple procedure takes place instead of filing separately in the trademark Offices of the various Contracting Parties, in different languages and paying fees to each Office, in different currencies. Different national/regional procedures, involving different languages and fees payable in different currencies, give rise to translation and exchange-related expenses. Where trademark protection is sought by filing direct to national/regional Offices, most of these Offices require the applicant to appoint a local representative to act on his behalf before the Office, at the time of filing of the application.

With the Madrid System, the designated Contracting Parties may only require that the holder appoints a local representative in case the holder has received a notification of a provisional refusal and the holder intends to contest this decision before the Office concerned.

The main advantages for trademark owners consist of the simplicity of the international registration system and the financial savings made (expenses related to translation, exchange-related fees and fees for local representatives) when obtaining and maintaining the protection of their marks abroad.

The companies most affected by the considerable cost involved in registering and maintaining marks abroad are Small and Medium Enterprises (SMEs). While a large company may afford to devote considerable funds to protect its marks abroad, an SME can ill-afford the registration of marks abroad, due to the high procedural costs. The Madrid System is used by one-third of worldwide applicants seeking protection of their marks through the Madrid System. Of these, about 80 per cent may be categorized as an SME, having a small portfolio of one or two marks.
The experience in Turkey (see page 36 in the Study) states that “[…] information provided by agents and firms in Turkey indicates that there has been a significant increase in filings for international protection from SMEs since accession, with SMEs benefiting from raised awareness of the need to protect marks appropriately in other jurisdictions”. In the current economic context, the possibility of providing easy, low-cost protection for marks provides a welcome advantage for companies and individuals as a factor that will favor exports.

The holder does not have to wait for the Office of each Contracting Party in which protection is sought to take a positive decision to protect the mark. If no refusal is notified by an Office within the applicable time limit, the mark is automatically protected in the Contracting Party concerned. In some cases, the holder does not even have to wait until the expiry of this time limit in order to know that the mark is protected in a Contracting Party, since he may, before the expiry of the time limit, receive a statement of grant of protection from the Office of that Contracting Party.

A further important advantage is that changes subsequent to registration, such as a change in the name or address of the holder, or a change (total or partial) in ownership or a limitation of the list of goods and services may be recorded with effect for several designated Contracting Parties through a single, simple and centralized procedure with the International Bureau of the World Intellectual Property Organization (WIPO) (the International Bureau) and with the payment of a single fee. Moreover, there is only one expiry date and only one registration to renew, which makes for easy portfolio management.

Benefits for the National Economy, the Government and Trademark Offices
The Madrid System may also be seen as benefiting the national/regional economy in general, and the government’s finances, in particular.

The Madrid System supports the country’s exports to the extent that it simplifies protecting trademarks abroad. Furthermore, it allows individuals and companies established in other Contracting Parties of the Madrid System to have easier access to the protection of their marks in the country/regional territory, since they can seek protection of the mark in any of the applicable Contracting Parties by merely designating these in the international application, or in a subsequent designation. This facility helps to strengthen the climate for foreign investment.

International registration is also to the advantage of trademark Offices. The Offices do not need to examine for compliance with formal requirements, or to classify the goods or services, or publish the marks, as such formalities will have already been undertaken by the International Bureau, and they can focus on their substantive examination. Moreover, they are compensated for the work that they perform; the individual fees collected by the International Bureau are transferred to the Contracting Parties in respect of which they have been paid, while the complementary and supplementary fees are distributed annually among the Contracting Parties not receiving individual fees, in proportion to the number of designations made of each of them.

Benefits for Professionals Active in the Field of Marks
The Madrid System provides an optional, alternative procedure that does not dismantle the traditional route of direct filing. Experience shows that companies and individuals may have a variety of reasons to seek protection for a mark alternatively through a direct national/regional application or through an international application. It is also relevant that applications of foreign origin proceed both from Contracting Parties to the Madrid System and countries that are not members of the Madrid System and that applications originating in Contracting Parties to the Madrid System may continue to be filed directly through a local agent or representative.

The overall volume of work for local trademark agents should not be expected to decrease by accession to the Madrid System. The effects of the international registration of a mark, as well as all the procedures to exercise and enforce the rights deriving from that registration, are governed by national or regional law. Trademark agents can expect to engage, in addition to tasks ensuing from the filing of applications, in tasks like searches, responses to objections, raising of objections, requests for annulment or cancellation, dispute settlements, license and assignment contracts, among others. Bearing in mind that the number of marks protected locally would gradually increase as a result of accession to the Madrid System, the overall volume of work for agents should also increase commensurately.

Accession to the Madrid System will normally offer local agents novel lines of activity, including advisory and representation work for their clients, in conjunction with the filing of international applications originating locally, as well as representing them thereafter in dealings with the International Bureau for the purposes of the international registration.

The following are some relevant studies concerning the madrid system:
Study on accession to the Madrid System for the international registration of marks.
Madrid Experience Sharing Report
Accession Kit: The Madrid System For The International Registration Of Marks
Comments on some statements about the Madrid Protocol and its impact on acceding countries