The International Trademark System in Madrid

Trademark rights are distributed geographically. The system of Madrid jurisdiction is an economical and convenient enough solution to register and manage a trademark from anywhere in the world. The system of international registration of trademarks, adopted in Madrid, offers owners of certain brands the opportunity to apply a trademark and protect its uniqueness and autonomy through a single procedure, using one language and paying a single set of state fees.

Key benefits of the Madrid system

Companies operating internationally can benefit from the following advantages of the Madrid system:

• simplified procedure for filing documents, which helps to significantly save money;
• all administration processes are optimized and registered centrally, updated and supported in the same way;
• application and communication is done in the language of the candidate’s choice (Spanish, English or French offered);
• there are no requirements for the appointment of local representatives;
• there is no need to comply with any documentary formalities, for example, draw up a power of attorney;
• the geographic protection of an international mark can be extended at any time. New designations can be added as soon as they may be needed within the commercial interest of the owner;
• limited inspection period, which is fixed at 1 year or 18 months;
• that the owner of the mark can designate the European Union as an IR would be an ideal way to protect the trademark within the EU. The IR system makes it possible to convert an EU designation into a designation used at the national level in each of the states not subject to objection. This is a much less burdensome and complex mechanism than converting a mark by filing an application with the appropriate authorities.

The main disadvantages of the system adopted in the Madrid jurisdiction

• State compliance. The Madrid jurisdiction system is not a substitute for the local legal framework for trademarks. The mark also cannot circumvent local requirements, for example, in the United States a demonstration of continued use of the trademark is required before it can be registered.
• Centralized attack. International registration is subject to the original application or registration within five years from the date the international registration was made. The original application or registration of most New Zealand trademark owners will be considered their application or trademark registration. In the event that the original application is unsuccessful or the initial registration is canceled, the international registration will also terminate. However, there is a provision regarding the transformation of rights under an international registration into a single national application.
• Narrowing of the granted rights. The dependence of the international registration on the original application implies that any restrictions that apply to the main trademark may affect the rights granted to the owner in the designated states in some way.
• Property rights. The international registration of the original trademark is unaffected by changes in ownership. Thus, the documentation relating to the change of ownership of a mark must contain the necessary guarantees from the new owner so as not to jeopardize the cancellation or prohibition of the international registration.

How many countries can you embrace? At the discretion of the owner. Depending on the countries required, the cost of filing an application for registration of a national trademark may be slightly more expensive or cheaper. In addition, for some symbols, the more stringent requirements of the Protocol apply in comparison with national requirements.

Will the trademark usage be the same for every country? IR does not change to use each designation, but it is possible to restrict services or goods to some extent to the jurisdiction of a particular country.

What states can you designate? Some jurisdictions offer a greater vulnerability to a right acquired through IR than to a right obtained through national registration. That is why, it is better to refuse to use a universal strategy for registration. Instead, it would be more expedient for companies to resort to the Madrid system, taking into account all its advantages, including lower costs and greater efficiency, which is important for protecting the mark in world markets.

Please note that after Brexit, the UK is no longer designated as the EU on the IR application.