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The Madrid Agreement

The Renewal of the Madrid Agreement

Through the United States trademark law system, a particular trademark may be perpetually endless, as long as it is renewed every ten years. A similar approach is available in the Madrid Agreement, where an international trademark registration must be renewed in order to continue its use and international recognition in terms of rights and protection. Renewal of the registration is required every ten years from the original date that the registration was issued.

An advantage provided by the Madrid Agreement is that the owner of the mark does not need to file a renewal for every country that the mark is internationally registered for protection; a single renewal application may be filed with the World Intellectual Property Organization, or WIPO, which would consider the renewal to apply for all countries and nations the mark is recognized in, unless otherwise specified.

The international registration renewal is considered to be complete once the necessary fees are paid in full, which may include the basic fee, as well as supplementary and individual fees for the involved Contracting Parties. A Contracting Party must not be found to have any prior notice of refusal or invalidation in order to be considered for the license renewal, whether it be for the mark itself, or the goods or services related to that mark. A renewal application may be filed, and will still be upheld as long as the payment of fees is completed by the end of the sixth month that the application was filed, and any necessary surcharges are paid.

Certain specific situations may arise regarding the renewal of an international registration, simply because they are more complex than domestic registrations, and offer more options regarding terms of protection. In the case that the holder or owner of a mark may wish to renew the international registration of a trademark, but limiting it to only certain Contracting Parties, the application for renewal and fees must also be accompanied by a statement regarding the renewal to certain parties, but not others, and a formal request to not record those parties in the register as having a renewed registration.

A similar situation may be applied to the renewal of only certain types of goods or services related to that specific trademark; the applications and fees must also be submitted along with a statement signaling which goods or services are to be considered for renewal, and which ones are to be excluded. Renewal of registration may be refused under the Madrid Agreement if the Contracting Parties have a prior invalidation recorded, whether it be for the goods or services, or because of an existing notice of provisional refusal.

A renewal may also be discarded if the necessary fees are not paid in full. In such a case, if at the time the application is submitted the imposed fees are not paid, or not paid in full, the International Bureau will notify the owner or holder of the mark, as well as any contracting parties and representatives, if any. The renewal fees have a period of six months to be paid in full; if the payment is received after the expiration date, the renewal will not be recorded. The Madrid Agreement further gives flexibility for payment of fees by only requiring at least 70% of the total fees to be received in the six month allotment period; three more months are provided to complete payment of the imposed fees effective from the date of notification of the missing fees.

The Madrid Agreement provides those with international copyright registrations ample time to complete the fee payments, while also allowing for flexibility in order for those marks to be renewed. Furthermore, the Madrid Agreement offers the convenience for a one-time renewal process rather than having to provide for a separate renewal application process for each of the nations or countries the mark is to be recognized in. The renewal process under the Madrid Agreement allows for the owner of the mark to renew the international registration in one shot, killing multiple birds with one stone, so to speak.

The Madrid Agreement Gazette

Under the Madrid Agreement, trademarks are constantly being updated in terms of new registrations, renewals, cancellations, changes in ownership or goods or services related to the mark, and changes of contracting parties. In order for the public as well as international trademark owners to be aware of marks at the international level, the International Bureau publishes the Gazette, formally titled, Gazette OMPI des marques internationales/WIPO Gazette of International Marks. The Gazette exists to provide for a publication relating to all pertinent aspects of international trademarks and providing information to the domestic offices as well as the public and trademark owners.

The Gazette publishes all types of information regarding international trademarks, the most obvious being the registration of new international trademarks. Once a mark is successfully registered at the international level, and recorded as such, the mark will be published in the Gazette, providing general information such as the owner’s name, country of the mark’s origin, contracting parties, and the relevant products or services associated with the mark. A reproduction of the mark is also published, so as to give a general understanding as to what its description is, and how it is applied to specific products or goods. Another important occurrence that is published in the Gazette in accordance with the Madrid Agreement is the publishing of any provisional refusals.

The Gazette will record and publish provisional refusals, but only providing for minimum information so as to not infringe the privacy of the mark’s owner or pertinent parties. The Gazette will make it known that a provisional refusal is imposed, but only provide information regarding whether or not certain goods or products are affected by the refusal; it will not provide for the actual reasons for refusal, nor the actual types of products or goods directly affected. Renewals are also published in the Gazette under Madrid Agreement legislature, in a similar fashion that new trademark registrations are published to be introduced to the public and concerned parties.

Other procedures as required by the Madrid Agreement will also be published in regards to a particular mark, such as changes of ownership, goods or products, or contracting parties, as well as cancellations, invalidations, and trademarks that have yet to be renewed. In general, a reproduction of the mark will be provided in the Gazette, and if a color reproduction is necessary, both a color and a black and white reproduction will be made available. Other information will also be published in the Gazette, such as any particular days that the International Bureau will not be open for business, a list of fees required by the Madrid Agreement, records of licenses granted, and any special requirements needed for a particular trademark registration.

The Gazette is made available to the domestic Office of Trademarks, providing for two copies free of charge. In the situation that during a particular year, the number recorded of registrations or designations exceeds 2,000, the International Bureau will provide for an additional copy for ever 1,000 designations that exceed 2,000. Owners of marks and relevant contracting parties may purchase the Gazette at half price, in the same amount of copies that are available to the domestic Office. The Gazette is also available online, in an electronic data base, which may be subject to usage fees, or subscriptions costs.

The Madrid Agreement International Registration

Under the Madrid Agreement, international registration is to be granted if the trademark registration application is appropriately and completely filled out, providing for all the necessary information, as well as any other requirements that may be asked by the Trademark Office of the mark’s origin, or of the International Register Office.

The International Bureau will ultimately decide whether or not the application is filed under the compliant provisions, and if it is deemed as such, the mark will be registered in the International Register. After the trademark registration is complete, the International Bureau will notify the domestic Office, as well as the applicant for international trademark registration and any contracting parties involved. The trademark registration will contain the following information, indicating proper registration and application approval:

All of the pertinent data as found in the international trademark application, with the exception of a priority claim

This exception pertains to any priority claim filed more that six months than the date of international registration.

The date that international registration occurred under the Madrid Agreement.

The international trademark registration number under the Madrid Agreement.

The mark’s classification according the the International Classification of Figurative Elements.

The exception occurs when the applicant declares that the mark being registered is to be considered in standard characters, in which case, the International Bureau will determine the equivalent characters as found in the Classification system.

The contracting party’s classification in accordance to the Madrid Agreement or Madrid Protocol

In regards to a prior mark as used by an organization, and seniority is claimed under said mark, the date of which the earlier mark was registered and the international trademark registration number will also be included on the trademark registration.

Under certain circumstances, there may be discrepancies regarding the actual date of the international trademark registration. These situations will usually arise from the trademark registration application being filed incomplete or not containing pertinent information that would ultimately deviate and slow down the registration process.

The most common occurrences could be that the application does not have the mark’s owner’s name or address, or any other way of contacting the individual or corporation filing for the registration; the application does not appropriately assign the names of the contracting parties, after declaring such an incorporation for registration; the reproduction of the actual mark in question is not provided on the application; or the classification of what products or goods the mark being registered is associated it with.

If classification of goods for the mark is missing, the International Bureau will provide the date of registration in concurrence with the date that the missing information is finally supplied. An incomplete application for international trademark registration will have the span of a two-month period to provide for the missing information. In the case that the missing information is in regards to any other factor but the classification of goods, it shall be registered under the date that the incomplete trademark registration form was received by the domestic Office.

The Madrid Agreement Requirements for Application

How to Use the Madrid Protocol

In
seeking the international registration of a trademark, one thing that should be
considered is to which treaty the country of the applicant is actually a
signatory of. It is an important consideration because not all countries are
members to the Madrid Agreement, and more specifically, certain countries may
only participate in either the Madrid Agreement or the Madrid Protocol. The
United States, for example, has only recently become signatory to the Madrid
Protocol, but not the Madrid Agreement. Currently, there are twelve countries
not included in the Protocol that strictly use the Madrid Agreement provisions for
international trademark registration. However, for the sake of the United
States, the only concern would be the adherence to the Madrid Protocol
provisions regarding the registration of trademark at the international level.
President George Bush signed into the Madrid Protocol with the Madrid Protocol
Implementation Act, which made the U.S. a member on November 2nd, 2003. The
actual registration process and requirements under the Madrid Protocol are not
much different than those implemented by the original Madrid Agreement. The
only key and relevant difference exists in the fact that the Agreement requires
that a trademark be nationally or federally registered in order to be eligible
for international registration. This is not the case with the Madrid Protocol.
One of the advantages of the Protocol is that a trademark may still be
considered for international register, as long as proof can be provided with
the application that said trademark is filed and currently pending approval for
federal registration. Furthermore, at the time that the trademark application
for national recognition is filed, the request to extend the application for
international consideration is also an option, and may be filed in concurrence
with the domestic application as well. The necessary international application
must still be filed and the proper payment of the imposed fees will also be
required. Another aspect that is different than the Madrid Agreement is that
under the Madrid Protocol, the first five years of international registration
are completely contingent upon the use of the trademark on the domestic or
national level. The owner of the trademark must upkeep the mark’s viable use
and federally registered status with the country of origin in order to maintain
the international registration status. It is also important to note, that
international registration of a trademark, regardless of which treaty is being
adhered to, must be managed accordingly; the owner of a trademark in
international jurisdictions is subject to follow the laws inherent to that
particular country. For example, if an international trademark is used in the
United States under the Madrid Protocol, the owner of that mark must file a
Declaration of Continued Use, or renewal, by the end of the sixth year of the
United States registration, as it is required under United States trademark
laws. After that, a renewal must be filed after every subsequent ten year
period. In other words, international registration grants the national rights
for a trademark depending on that nation’s own trademark laws, and it is up to
the owner must be fully aware of the legislation of each foreign country in
order to maintain the international registration for that particular nation.
Otherwise, the registration and application process under both the Madrid
Agreement and Madrid Protocol are virtually the same. Only a single application
is needed, as well as a single and collective fee, for the application for
international registration in multiple countries. The basic and main requirements
for international trademark registration are:

The applicant must be domiciled in the home country

The applicant must be considered a national of that country

The applicant has an actual and viable commercial
establishment for the use of the trademark in question

The applicant is responsible for furnishing all the
appropriate and required fees

The applicant is subject to approval pending a examination of
the International Registration

Each country that is being applied to will impose its own national
requirements for trademark registration as guidelines for approval; it is
possible that out of the countries being applied for international trademark
rights, more than one may deny approval, while others accept the registration.

All applications are made to the International Bureau, which is the
administrative office responsible for international trademark registration and
applications, which is a division of the World Intellectual Property
Organization with its headquarters in Geneva, Switzerland. The appropriate fees
are to be made payable in Swiss francs, which the appropriate exchange rate may
be applied to reflect the fee in the amount of the applicable currency of that
nation.

The Importance of the Madrid Protocol

The Madrid Protocol, at first glance, seems to have the same advantages that the Madrid Agreement instated some 100 years earlier. After all, the overall purpose is to facilitate in the international registration of trademarks by allowing for a singular application process while registering the mark in numerous nations in one simple procedure. However, there are some distinct advantages of using the Madrid Protocol rather than the older Madrid Agreement.

Firstly, the Madrid Protocol is becoming much more popular for use throughout the world, having about 20 more members than are found under the Madrid Agreement. However, it is important to note that there are twelve countries that are sole members to the Madrid Agreement and not the Madrid Protocol. This may prove to be a disadvantage to countries only directly involved with the Madrid Protocol, such as the United States and the European Union.

For example, an owner of a trademark from the United States will not be able to register the mark for use in one of those countries; registration of a trademark will only be recognized by the nations under the Madrid Protocol umbrella. For the purpose of the United States, however, this may not prove to be such a detrimental aspect in the expansion of national trademarks in overseas markets with the introduction of the Spanish language as an option for the application language. This new provision makes the Madrid Protocol a much more attractive option than its predecessor, the Madrid Agreement.

The United States, as a collective unit, is more likely to enjoy higher levels of success in Latin America than in those countries strictly adhering by the Madrid Agreement. Another advantage of the Madrid Protocol is the fact that by having a wider selection of application languages, such as English, French, and Spanish, the costs to provide for lawyers or translators to be involved in the registration and application process is no longer needed.

Such extra considerations can prove to be quite costly and time consuming for owners of trademarks entertaining the idea of international expansion. The Madrid Agreement only provides for the applications to be done in French, which limits the convenience factor of having just one application for multiple countries, which is supposed to be one of its main advantages. The Madrid Protocol also offers a viable train for companies that can be considered as small or medium enterprises.

In instituting only one required application for various countries for international trademark recognition and imposing one singular and collective fee, the option for international expansion is not so far fetched, and is economically viable. This is proven by the fact that there are over 412,000 international trademarks as reported at the end of 2003, which were controlled by over 100,000 owners with trademarks with multiple international registrations.

It is plain to see that the Madrid Protocol is surely becoming the preferred method between the two treaties under the Madrid Agreement, and it seems only a matter of time when the remaining countries still yet to join the Madrid Protocol will finally be swayed to join; especially with its newest signatories being the United States and the European Union, both being extremely important commercial centers and markets.

Implications of the Madrid Protocol on US Law

The Madrid Protocol is the only treaty that has any type of effect on the United States trademark laws, when comparing it to its predecessor, the Madrid Agreement. The reason being solely the fact that the United States is only a signatory to the Madrid Protocol, and adheres to only the trademark laws or provisions provided by that system of legislature.

The United States joined the Madrid Protocol in 2003. Reasons as to why it failed to register any earlier, or why it never became part of the Madrid Agreement altogether is still to be determined. However, the convenience factor provided under the Madrid Protocol proved to be attractive enough for the U.S. to finally join, which would ultimately have an impact in terms of its own national trademark laws. The impact may not be as stunning as may be inferred; dealing with trademarks both on the national and international level may prove to be a seemingly daunting task.

However, the United States itself only acts as an intermediary faction in terms of international trademark registrations. The International Bureau is the faction charged with the actual administrative processes and procedures regarding all aspects of international trademark laws. The United States Patent and Trademark Office only accepts the required applications and fees, and forwards them to the Bureau.

The only process they are involved in is the actual examination of trademark to be considered at the international level. However, this process is no different than registering a trademark on the domestic or federal levels, for the Madrid Protocol calls for such examinations to be carried out as if they were do be registered under those circumstances.

In actuality, the Madrid Protocol does not actually have any specific implications on United States trademark laws, but rather just compounds their applications to foreign trademarks to be considered and protected under our domestic policies. Foreign marks in the U.S. must adhere to the United States trademark laws, as if they were nationally registered. Therefore, our policies actually influence outside trademarks, rather than the Madrid Protocol influencing our national legislation on trademark laws.

The actual application and registration process of an international trademark is very similar to those provisions and requirements instated by national or federal trademark registration procedures in the United States. The implications of the Madrid Protocol statutes have no real effect on the actual trademark laws of the United States, however, the responsibility of maintaining an internationally registered trademark falls squarely on the shoulders of the trademark’s owner or holder, which must comply with the U.S. trademark laws in order to have the international rights and protections secured in foreign nations.

Background Information on the Madrid Protocol

The Madrid Protocol, formally known as the Protocol Relating to the Madrid Agreement, is one of the treaties that governs the Madrid System for the international registration of trademarks. The Madrid Protocol was adopted in 1996, with the end purpose of adding flexibility to the Madrid System.

As of 2004, the Madrid Protocol has a total of 76 members, with the additions of the United States and the European Union being of worthy note. The Madrid Agreement was instated in 1891, and currently has 56 members following its provisions. The discrepancy in the number of members between both treaties exists because the Protocol provided for provisions that allowed for a more flexible and less strict requirements than the original Agreement.

One of the key differences is that under the Madrid protocol, international trademarks may be considered without having already obtained a federally or nationally registered trademark in the country of origin. The Madrid Protocol allows for a trademark holder or owner to file an international trademarks registration while the national trademark registration is still pending; the Madrid Agreement requires that such registration already be completed. Furthermore, the Madrid Protocol allows for a trademark’s owner to file both the national and the international trademarks application for registration at the same time, or immediately following the submission of the national application.

However, even though there are differences between the Madrid Protocol and Madrid Agreement, their objectives are still the same. One of the first issues to address was to provide for the protection of international trademarks creating a central organization to process and administratively control international trademarks with a simple registration process and single application for recognition of trademark rights in multiple countries; the effect of this would lower costs for trademark owners or corporations in the expansion of the mark and its related products or services into the international markets.

Secondly, the Madrid System had simplicity and functionality as its main concern by allowing for a more effective way to manage international trademarks by allowing for a collective system for the registration of marks, by requiring only one application and one collection of fees; prior to the system, international trademarks registration had to be done individually for each country the mark was to be used, which made it more costly by requiring lawyers to interpret to national trademark laws of each country, and the need for translators to aid in the process.

Furthermore, the idea of having to register for each country individually was not only expensive, but extremely time consuming and confusing. The Madrid Agreement and Madrid Protocol allow for a convenient procedural process for owners of trademarks who which to enter their products or services into foreign nations. Most recently, the Madrid Protocol introduced Spanish as one of the options for languages to be used in the application process, making this treaty more attractive to Latin American nations and Spanish-speaking countries to join membership as signatories to the Agreement provisions.

Because the Madrid Protocol provides for a more updated and functional set of provisions than its predecessor in the Madrid Agreement, it has largely become the preferred treaty for international trademarks registrations and applications world wide.

The Madrid Agreement Fees

The Madrid Agreement requires for certain fees to provide for the registration of a trademark at the international level. Fees are also required for renewals, and supplementary fees are imposed regarding the designation of contracting parties, as well as any parties that will be licensed to use that particular mark.

All fees must accompany their respective applications at the time of submission in order to provide for the proper registration or administrative process to proceed without any lapse of time or incomplete recording of such procedure. Fees are to be paid to the International Bureau, whether the transaction be directly from the applicant or through the domestic Office in which the application is to be initially processed.

Contracting parties may also collect the required fees, as longs as a notification is made to the Director General. All fees are required to be made in full, and can be made through credit card, cash, or by setting up an account with the International Bureau, which acts similar to a debit account.

Under specific provisions provided under the Madrid Agreement, in situations where the payment is incomplete or not made in full, the recording of the actual administrative procedure concerned will be enacted once such payment is fully received; however, the Madrid Agreement allows for expiration dates or allotted periods of time in which the procedure will not be nullified, as long as payment is made in full within that time period.

In certain cases, an extra fee may be implemented where the original payment was not made in full, and the extra time is undertaken by the holder or owner of the trademark, or its contracting parties. The Madrid Agreement also requires individual fees, which refer to the contracting parties being designated for use with a particular mark.

The individual fee is comprised of two parts, the first being made at the time the international registration application is submitted, and the later part is to be paid during the imposed period decided by the International Bureau. The notification of payment by the contracting parties must contain the number of the international registration in question, the name of the holder or owner of the trademark, and the date of the second payment on which it must be fully paid. If the payment of the second part is in correlation to the number of goods or classes the trademark is associated with, such information must also accompany the payment notification.

If payment is not made by the effective expiration date by any concerned contracting parties, the international registration will be void in respect to those contracting parties. All payments made to the International Bureau are considered to be made once the Bureau itself receives such payment, and not any organization or Office initially accepting the payment. Fees are subject to change and modification as applied by the International Bureau and the Madrid Agreement, and are also subject to certain procedural or administrative processes and exemptions.

It is important to note that all payment transactions are to be made in Swiss francs, so the applicable exchange rates will apply, and such changes will be reflected on the imposed fees in accordance with the currency of the country of origin. Currently, a basic registration fee is 653 Swiss francs for a black and white application, and 903 Swiss francs for applications that require a color reproduction of the mark. For countries or nations that qualify for the Least Developed Country considerations provided by the Madrid Agreement provisions, the black and white application is 65 Swiss francs, and 90 Swiss francs for the color application.

Complementary and supplementary fees are imposed in 100 Swiss francs denominations, and multiplied by the number of applicable designations or classes of goods or services exceeding three. Individual fees are determined by the International Bureau, and are applied in concordance with the Madrid Agreement provisions.

A Full Guide to the Madrid Agreement

The Madrid Agreement, also commonly referred to as the Madrid System, is the international system responsible for the registration of trademarks at the international level. International registration of trademarks is necessary for owner’s of a particular mark to have their trademark rights and protections respected and adhered to in foreign nations. There are two treaties under the Madrid Agreement, the Madrid Agreement Concerning the International Registration of Marks of 1891, and the Protocol Relating to that Agreement, implemented in 1989.

The first treaty sets up the actual structure of what is referred to as the Madrid System, which provides for the various regulations, requirements, and restrictions concerning international trademarks and their registration. The Madrid Protocol is a revision of the original provisions found in the Madrid System, with the ultimate purpose of allowing for more flexible consideration of its legislation by countries that have not part of the Agreement, or their country’s trademark laws prevented them to meet the instated requirements under the first treaty.

The Madrid System provides a trademark owner with the convenience of being able to register a trademark for international consideration for various countries in one application and registration process. Registration will give those trademarks the rights and protections instituted by those countries as if it were registered domestically.

The Madrid Agreement is presided by the International Bureau of the World Intellectual Property Organization located in Geneva, Switzerland. The Madrid Agreement currently has 84 members total that adhere to its regulations and provisions, including both the Madrid System and the Madrid Protocol. The Madrid Protocol itself, being a separate treaty, is adhered to by 78 members. Many of these members are actually party to both treaties, being that the Madrid System was instituted in 1891, and the Protocol, most recently created in 1989. The Madrid System still provides for certain advantages that enticed many nations to join the Madrid Agreement in the first place.

The main advantage is that a trademark owner can apply for international registration domestically to gain protection to any or all of the participating countries with one application and registration procedure and one collective fee. This eliminates the need to submit a separate application for each country that the trademark’s owner seeks protection in.

The main requirement of the Madrid Agreement is that the trademark must first federally registered in the country of origin for eligibility at the international level. Changes to the registration, such as names or addresses, can also be done through one application so as to centrally amend the registration and apply such changes to the various nation’s own record for those trademarks.

However, one key disadvantage and negative aspect of this procedure is that such changes in the actual registration will effectively be applied to all countries recognizing that trademark; this proves to have a negative effect is the original registration shows that the trademark is applied to more than one type of product. If that product is no longer used under that specific trademark, and the application for the change is filed, the change will also apply across the board.

This eliminates the possibility for the owner of the trademark to commercially use the trademark for that product in one country, but not in another. Furthermore, this also applies if the registration is cancelled, revoked or denied by the domestic standards, and is also canceled at the international level under the Madrid Agreement.

The Madrid Protocol revised some of these provisions found under the original Madrid Agreement, allowing for certain procedures that can circumvent some of the extenuating circumstances, but prove to be quite an expensive undertaking, and only used if when no other option is available. The United States is not a party to the Madrid Agreement, but did enlist as a party to the Madrid Protocol on November 2nd, 2003.

The Madrid Agreement