Due to the principle of territoriality, trademarks must be registered separately in each country. In today’s globalized business environment, this can impose a significant financial burden on companies. Managing and coordinating the different trademark registration systems and procedures for each country is also challenging.
To alleviate this burden, the International Trademark Registration System was developed, commonly referred to as the “Madrid International Trademark Registration” system because of the treaty established in Madrid, Spain.
One Application for Multiple Countries
By utilizing the international trademark system, you can submit a single international trademark application (in English) to your local patent office. This application will then be considered filed in all the designated countries listed in the application.
Madrid System Process
- Domestic Application
- International Application (via the local patent office)
- International Bureau (WIPO)
- Patent Offices of Designated Countries
The trademark to be registered internationally must match the trademark already filed or registered in the applicant’s home country. This is because the system is designed as an extension of the domestic trademark’s territorial scope.
Pros and Cons of the Madrid System
Advantages: Cost Savings
One of the biggest benefits is the significant reduction in costs. Without the system, foreign applications require hiring local representatives in each country, incurring separate attorney fees. The international system eliminates these fees entirely for the application stage.
Disadvantages: Limited Customization
Since a single application is used for multiple countries, there is limited ability to tailor the content of the application to each country’s requirements. For instance, if adjustments to product descriptions or trademark composition are necessary for certain countries, the international registration system may not be suitable.
Examination by Each Designated Country
Despite the term “registration,” the international process is essentially just an application. Each designated country’s patent office will conduct its own examination, and registration is only completed once each office approves it.
Even if you have an international registration, it’s crucial to check which countries have completed the registration process. To help monitor this, WIPO offers the Madrid Monitor, an international trademark registration tracking system.
Due to the independent examination processes, the trademark’s validity may lapse in some countries while remaining active in others.
Simplified Trademark Management
After international registration, subsequent tasks like trademark renewal, address changes, and ownership transfers can be managed through the International Bureau in a streamlined manner.
For example, if you hold trademark registrations in five different countries and wish to transfer them to another company, you would normally need to complete separate transfer procedures in each country. However, with an international registration, you can transfer all the rights at once by submitting the necessary documentation to your local patent office, which will then notify the International Bureau. The Bureau, in turn, informs the patent offices of the designated countries.
The same applies to trademark renewals. Instead of renewing registrations separately according to each country’s laws, you can renew the international registration in one step, ensuring the validity of the trademark across all designated countries.
Not Always Advantageous for Every Country
While the international system is highly efficient, it only applies to countries that are signatories to the Madrid Agreement or Protocol. There are still many countries that have not joined the treaty, requiring separate applications for trademark registration.
Additionally, some countries, despite being members of the Madrid system and having updated their trademark laws accordingly, do not effectively implement the treaty. In these countries, examinations may not be conducted properly, and trademark rights may not be fully recognized unless additional formalities, such as public announcements in local newspapers, are completed. In such cases, it may be more effective to proceed with individual applications through local representatives rather than using the international registration system.