International registration (the 'Madrid Protocol')

The Madrid Protocol is a system whereby via a single application, a whole host of national trade mark rights can be obtained without the need to file individually in these countries, as long as they are also signatories to the Protocol. As of September  2010 there are 82 signatories - click here to see an updated official list on the web site of the World Intellectual Property Organisation (WIPO).

An International Registration, therefore, is a bit like the Community Trade Mark (see Fact Sheet on the CTM), except that, unlike the CTM, it is not a 'unitary' mark with effect in the different countries. Based on, for example, a home UK registration or application (the 'base' mark) an application for an International Registration is made to WIPO in Geneva (who administers the system), via the UK Intellectual Property Office. The mark is not examined as such, except for certain formalities, and a Registration Certificate is issued almost immediately. The mark is then examined substantively by the national offices of each of the designated countries on the application form (these are called 'Contracting Parties'). They do this according to their national laws. As long as there are no official objections, and no local opposition, protection for the international mark is achieved within 18 months (in some cases earlier). Indeed, if no refusal has been communicated within the official period, the mark has automatic force in that country despite any reservations of the authorities or others. The onus is on them to work within the time limits of the system.

If objections are raised by the authorities, local representatives will have to deal with the authorities, liaising with the applicant, usually via his trade mark attorney.

Once protection is achieved in a Contracting Party, there is no additional trade mark certificate issued, but the International Registration now has the same force in that country as an equivalent national mark.

There are lots of administrative advantages to an International Registration. Involved and complicated paper work can be avoided, such as powers of attorney for foreign agents. Recordal of new ownership of the mark is dealt with easily. As long as the assignee is entitled to be the 'holder' of the mark in their own right, the transfer is effected for all the countries by one recordal before WIPO. One of the rules that needs to be adhered to is that the owner of the mark must be based in a Contracting Party.

A disadvantage of the International Registration system is that the base mark, from where protection in other jurisdictions is sought, is the lynch pin (or Achilles' heel) of the whole fabric of protection for a period of five years. If this base mark is 'attacked' or altered in some way during this period, all the other marks are affected. After five years, however, there is no such vulnerability. On the other hand, if one of the nationally protected designations is cancelled, this does not have any effect on the rest of the International Registration.

Why the Madrid Protocol is cost-efficient

Substantial savings can be made using the Madrid Protocol compared to filing each mark individually, especially if a number of countries are designated. Official fees are in Swiss Francs (the currency of WIPO in Geneva, Switzerland). A basic fee is paid, regardless of the number of designations. This is, on writing, 653 Swiss Francs (CHF). If the mark is in colour the fee is 903 CHF. For filings beyond three classes, add 100 CHF. Additional fees are payable for each designated country. This may be just 100CHF, or it may be more (called an 'individual' fee) if the country or region concerned have higher costs. The Community Trade Mark, for example, has an individual fee, the EU now being a region that is signatory to the Madrid Protocol. The US is another case in point.