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MADRID PROTOCOL

PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE


INTERNATIONAL REGISTRATION OF MARKS
How the Protocol Works

 First, an applicant begins by either filing a conventional trademark


application in its home country, OR by relying on an existing registration
there (“the home mark”).
 If applicant relies on an existing registration, the applicant then files another
separate application in its home country trademark office, based on the
home mark. This is called the international application.
 For the international application, the applicant requests an international
registration, and designates one or more other Protocol member countries
where trademark protection is being sought.
 The home country trademark office then forwards the international
application to the World Intellectual Property Office (WIPO). International
registration is granted if all formal requirements are met.
 WIPO notifies the Protocol Member countries where protection is being
sought and these countries shall respect the request for protection as if it
were a national trademark application directly filed by the applicant there.
Who can file an international
application & where to file
 Any entity or individual who is a domicile or a national of a Madrid Protocol
member country or who has a “real and effective industrial or commercial
establishment there.
 For example, Philippines and Japan are both members of the Madrid
Protocol. Hence, a Japanese corporation with an operating facility in the
Philippines , which is also a Protocol Country, may file an application either
in Japan or in the Philippines.
Precondition to Filing

 Applicant must begin with a home application/registration. The


application or registration must be for the same mark and the same goods
and services for which international protection is sought.
Filing the Intl Application

 File home application.


 Once filed or once the home registration has been identified, the next step
is to file an international application in the applicant’s home trademark
office.
 What must the international application contain?
 It must contain a request for protection in at least one other Protocol member
country . This request is referred as the “extension request.”
 Home trademark office will then conduct an examination on the
international application to ensure and certify that the mark is identical to
the mark in the basic home application/registration, that the applicants are
the same, and that the goods and services are covered by the home
application.
 If the home trademark office is satisfied with its examination, it will forward
the international application to WIPO.
 Once WIPO acquires jurisdiction, it will also conduct an examination to
make sure that all the formal requirements are met, that the goods and
services are correctly classified under the Nice Convention, and all fees
have been paid.
 What if WIPO will find issues with the international application?
 WIPO will inform the home office and the applicant and those issues must be
addressed within a three month period to avoid abandonment.
 Once the application is formally correct, an international registration will
issue and WIPO will notify the trademark offices of the countries for which
there had been extension requests.
 The trademark offices of the countries for which there had been extension
requests will then conduct their own separate examination of the request
for protection at their own countries.
 The examination done by the trademark offices of the countries for which
there had been extension requests is just as it would be for any application
filed directly in that country.
 Note that these countries can refuse the registration or the request for
extension of protection on any grounds available such as opposition.
 If a national trademark office ultimately allows the extension request, that
request will register and is often referred to as a “registered extension of
protection or REP.”
Where the Madrid Protocol Provides
Protection
 It will provide protection in any Madrid Protocol Country that is designated
in the original international application, or in a designation that can be
made at a later time.
Dependency of the Intl Registration on
the Home Application or Registration
 Five year dependency: For the first five years following the effective date
of the international registration, the validity and the scope of the
international registration will depend upon the fate of the basic home
application or registration.
 What does this mean? For example, if within that five year period, there
were any limitations, final refusal or abandonment of the home application,
or the home application was cancelled or invalidated, it has the same
effect upon the international registration and all extensions of protection
into Madrid Protocol Countries. The same is true if the abandonment,
cancellation occurs at the end of the five year period due to an action
initiated during the five-year period.
 If the five year period has been surpassed, the international registration
then becomes independent from the basic home application or
registration.
Renewal

 An International registration lasts for ten years and is renewable in ten year
increments. It may be renewed with the WIPO with respect to all extension
countries.
 If the international registration expires or is cancelled, all corresponding
extensions of protection will also expire. WIPO will send a reminder to the
owner six months before the renewal is due.

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