The beauty of Madrid

This year marked the 6th anniversary of Australia becoming a Madrid Protocol member. This allows for an international trade mark application to be filed in many countries through a single application filed in Australia. Britain has been a member since 1995 but the USA didn’t sign up until November 2003. There are now more than 80 member countries and the numbers keep growing.

Madrid is a remarkable example of how diverse countries and cultures can reach agreement on the complex laws that govern trade marks and brands. This sort of co-operation can only be dreamed of in many other areas of law. Sure, there are still teething difficulties and many countries (including Canada and New Zealand) have not joined. But the beauty of Madrid lies in the fact that it forces you to think and act global. Compared to pre 11 July 2001 (the date Australia became a member) it is now relatively easy to start a global trade mark portfolio from virtually anywhere with an internet connection.  Brand owners never had it so good.

Each year has seen a new record for international applications filed in Australia. In 2002 there were 224 applications. This almost quadrupled to 846 in 2005. And a new record was set in 2006 with 1068 applications. 2007 is also set to be a bumper year with 581 applications already filed by July.

It’s the same story for each new member. For example, after November 2003 when the USA first joined there were just 34 applications designating the USA as the office of origin. By 2004 this increased to 1025 applications, by 2005 there were 2584 and by 2006 there were 3296 applications. By July of this year there had already been 1910 applications. Similarly, in 2004 there were just 42 applications which designated the European Community as the office of origin. By 2006 this had grown to a massive 2523 applications.

Results for all members can be found at  http://www.wipo.int/madrid/en/statistics/.

 

Who uses Madrid?

So which companies are the key applicants for international registration? The oldest international trademark registration still in effect, is the Swiss watchmaker brand Longines. This was first registered in 1893 shortly after the Madrid system for the international registration of marks was first set-up under the 1891 Madrid Agreement. But the utility of an international registration was very limited in the 19th century as there were few members. Things really started to move after The Madrid Protocol was adopted in 1989 and then even more so after the USA and the European Community joined in 2003 and 2004 respectively.

2006 was a record year with 37,224 international trademark registrations, a 12.2% increase over 2005. German-based companies were the biggest users followed by French and USA based companies. Australia moved up from 12th to 11th place.

The most popular international class applied for was 9 (computer hardware and software) followed by 35 (advertising, retailing and business management services) and 25 (clothing, footwear and headgear).

 

Who can apply for an international registration?

An application for an international trade mark registration under the Madrid Protocol must be

    • by a person or entity based in a contracting party country. As Australia is a contracting party Australian citizens and Australian incorporated companies are eligible to apply.
    • based on one or more Australian applications or registrations for an identical mark and for the same goods or services claimed in the international application.

Application procedure in brief

An application for an international trade mark registration under the Madrid Protocol can be filed directly with IP Australia. It will check that the application is supported by a home application or applications and that the correct fees have been paid. If all is in order it will certify the application before sending it to the International Bureau at WIPO in Geneva, Switzerland.

Shortly after receipt WIPO assigns a number and date to the application and it will then register the mark and publish it in the WIPO Gazette of International Marks. WIPO then forwards the details to each nominated country which then examines the application in accord with their own trade mark laws. If an objection is raised in a country you will need the help of a local trade marks attorney.

The international register kept by WIPO (Madrid Express) can be found at

http://www.wipo.int/ipdl/en/search/madrid/search-struct.jsp

Madrid Protocol application fees

IP Australia has a simple fee calculator that helps you easily calculate the filing fees (and these can really add-up) across member states of the Protocol. Seehttps://pericles.ipaustralia.gov.au/ols/ecentre/content/olsFeeCalculator.jsp

In most cases you will still need the help of a trade marks attorney, because of the large investment in official fees and the numerous legal issues that loom in each jurisdiction. But it’s worth it because a professionally drawn Madrid Protocol application is the best way to get the ball rolling on international brand protection.
Member countries of the Madrid Protocol

(as at September 2007)

Albania
Antigua & Barbuda
Armenia
Australia
Austria (EU member)
Azerbaijan
Bahrain
Belarus
Benelux (Belgium, The Netherlands and Luxembourg) (EU member)
Bhutan
Botswana
Bulgaria(EU member)
China (excluding Hong Kong and Macau).
Croatia
Cuba
Cyprus (EU member)
Czech Republic (EU member)
Denmark (EU member)
Estonia (EU member)
European Community
Finland (EU member)
France (EU member)
Georgia
Germany (EU member)
Greece (EU member)
Hungary (EU member)
Iceland
Iran
Ireland (EU member)
Italy (EU member)
Japan
Kenya
Kyrgyzstan
Latvia (EU member)
Lesotho
Liechtenstein
Lithuania (EU member)
Macedonia
Moldova
Monaco
Mongolia
Montenegro
Morocco
Mozambique
Namibia
Netherlands Antilles
North Korea
Norway
Oman (from 16th October 2007)
Poland (EU member)
Portugal (EU member)
Romania (EU member)
Russian Federation
San Marino
Serbia
Sierra Leone
Singapore
Slovakia (EU member) 
Slovenia (EU member) 
South Korea
Spain (EU member) 
Swaziland
Sweden (EU member) 
Switzerland
Syria
Turkey
Turkmenistan
Ukraine
United Kingdom
United States of America
Uzbekistan
Vietnam
Zambia

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