The next major intellectual-property (IP) treaty that I would like to discuss in this blog is the Madrid Protocol. The Madrid Protocol is similar to the Patent Cooperation Treaty in that it allows an entity to file a single application to preserve the entity’s IP rights in multiple countries. However, the Madrid Protocol is directed to trademark rights.
The Madrid Protocol is governed by a treaty that is known as the Madrid Agreement that concluded in 1891. The agreement was amended or revised seven times until it produced the Madrid Protocol in 1989. The United States and the European Union acceded to the Madrid Protocol on November 2, 2003, and October 1, 2004, respectively.
The Madrid Protocol has been adopted by 101 parties. Some of the parties are members of two regional organizations – the European Union and the Organisation Africaine de la Propriété Intellectuelle. The Madrid Protocol is administered by the World Intellectual Property Organization.
The Madrid Protocol allows an applicant who has a connection to one of the contracting parties, effectively, to file a single trademark application in multiple countries at the same time. The application is subject to a single set of procedural rules and requires a single fee. The application may be made in one of three languages, English, Spanish or French.
In many cases, the applicant will not need to hire local counsel, which can significantly reduce the filing fees. However, the applicant must hire local counsel when certain problems arise.
The application may be based upon a registration that has been obtained in one of the contracting parties or upon a separate international application.
A registrant can also renew its registration through a single, streamlined process.
Another advantage of obtaining trademark protection through the Madrid Protocol is that ownership information for a subject application or registration may be changed through a single procedural step.