Madrid Protocol

The Madrid System, also known as the Madrid Protocol, is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. It was established pursuant to the multilateral treaties Madrid Agreement Concerning the International Registration of Marks of 1891 and the Protocol Relating to the Madrid Agreement (1989), which has been the sole governing treaty since 2016.

The Madrid System provides a centrally administered system for obtaining multiple trademark registrations in separate jurisdictions; it does not create a single unified registration across different jurisdictions, as in the case of the European Union trademark system.Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (Official Journal No. L78, 24.3.2009, p.1) Rather, applicants file a single international trademark application and pay one set of fees to apply for protection in any or all countries that are members of the system; each country has discretion to grant the application. Once the trademark authority of a designated country grants protection, the mark is protected in that jurisdiction just as if that office had registered it.

The Madrid System is administered by the International Bureau of the United Nations World Intellectual Property Organization (WIPO) in Geneva, Switzerland. As of May 2025, the Madrid System consists of 115 members covering 131 countries; known collectively as the Madrid Union, they represent more than 80% of world trade.

History and development

The Madrid system comprises two treaties; the Madrid Agreement Concerning the International Registration of Marks,The full name of the Madrid Agreement is the "Madrid Agreement Concerning the International Registration of Marks of April 14, 1891 (as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Nice on June 15, 1957, and at Stockholm on July 14, 1967, and as amended on September 28, 1979)". which was concluded in 1891, and entered into force in 1892, and the Protocol Relating to the Madrid Agreement, which came into operation on 1 April 1996. The Madrid Agreement and Madrid Protocol were adopted at diplomatic conferences held in Madrid, Spain.

The Madrid Agreement was originally intended to provide for an international registration system, but did not achieve this for two significant reasons:

The lack of international acceptance. Many non-member countries, including the United Kingdom, the United States, and Central American, South American and Asian countries, such as Japan, were not adherents, which undermined recognition of the system as a truly "international" regime. Significantly, many of these countries represent the largest numbers of trademark filings and registrations in the world; and The mere forwarding by the International Bureau of a uniform application to member countries, rather than the registration of the applicable trademark in the national trademark registers, precludes an actual "registration" system.

Some of the large trading nations like the United States, Japan, and Canada, which have a large number of filings at the national level, did not join the Madrid Agreement due to another perceived flaw in the system: if the home registration upon which an international registration was based came under 'central attack', the international registration would be cancelled or limited to the same extent that the home registration was cancelled or limited.

During 1966 and 1967, attempts were made to address this issue by establishing a new treaty that would reflect the need of the times rather than the world of the 1890s when the agreement was adopted. This led to the drafting of the Trademark Registration Treaty (TRT) which was adopted in Vienna in 1973, and entered into effect in 1980, with five contracting states, namely, Burkina Faso, Congo, Gabon, Soviet Union and Togo. In the absence of more accessions to the TRT and the low number of registrations since its inception, it was clear that the TRT was unlikely to supplant the Madrid Agreement.

As the realization of the introduction of a multi-jurisdictional (or at least pan-European) European Community Trade Mark (CTM) approached, the relevancy of the Madrid system came under scrutiny. Pressure increased on WIPO to maintain its relevance and strengthen the agreement by increasing membership, possibly through amendments. This culminated in the introduction of the Madrid Protocol, pursuant to which a CTM registration could be a 'foundation' or 'home' registration upon which an international registration could then be established. This mechanism is referred to as a "linking provision." The Protocol, after considerable lobbying efforts by WIPO, was signed by many countries, including most of the present members of the Madrid Agreement, and some countries that are members of the European Union, but were not members of the Madrid Agreement. The Protocol entered into force on 1 December 1995, and became operative on 1 April 1996.

Many countries have needed to modify or consider modifying their trademark laws in order to adhere to the Protocol, in addition to the modifications required by GATT-TRIPS/WTO.

In Europe, resistance to the Protocol was brought by trademark attorneys who were afraid of losing business because a Community Trade Mark application could be filed directly through the Madrid Protocol process.Report by the International Trademark Association, April 2003 In the United States, the proposal bogged down due to a trademark dispute between two businesses who were heavy campaign contributors to certain Congressmen, followed by a repeated reshuffling of the Senate due to elections and a subsequent defection of a Republican senator. The treaty was eventually ratified during the presidency of George W. Bush. With the accession of the U.S. and EU to the Madrid Protocol on 2 November 2003, and 1 October 2004, respectively, most major trading jurisdictions have joined the Madrid system.

On 31 July 2015, Algeria deposited its instrument of accession and acceded to the Madrid Protocol on 31 October 2015; as Algeria was the last member of the Madrid system to adhere to the protocol, the protocol became effective across the entire Madrid system.Algeria Joins the Madrid Protocol, WIPO, 7 August 2015

Members

Adherence to the convention or the protocol includes membership of the "Madrid Union." , there are 116 members made up from 132 countries. The original treaty has 55 members, all of which are also party to the protocol (when Algeria joined the Madrid Protocol on 31 October 2015, all of the members of the Madrid Agreement were also members of the Madrid Protocol and many of the aspects of the Madrid Agreement ceased to have any practical effect). The term 'Madrid Union' can be used to describe those jurisdictions party to either the agreement or the protocol (or both).

The protocol has been in operation since 1996 and has 100 members making it more popular than the agreement, which has been in operation for more than 110 years and has 55 members.

+Table of Madrid Union members with year of accession to the agreement and protocol, as applicableContracting partyAgreementProtocol 2018 African Intellectual Property Organization (OAPI) 2015 1995 2003 1972 2015 2000 1991 2000 2001 1909 1999 1995 2007 2005 1991 2002 1892 1998 2000 2000 1992 2009 2006 2019 2017 1985 2001 2022 2015 2019 2022 1989 1995 2012 1991 2004 1989 1995 2003 2003 1993 1996 1980 1996 1996 1952 2009 1998 1998 1998 2004 1996 1892 1997 2015 1998 1922 1996 2008 2000 1909 1997 1997 2013 2018 2003 2003 2001 2010 1894 2000 2022 2000 1991 2010 1998 1998 1991 2004 2016 1995 2000 2007 2025 1999 1999 1995 2009 1933 1998 1997 1924 1998 2008 2018 2019 2013 1956 1996 1985 2001 2006 2006 1917 1999 1998 1998 2004 2004 1893 1998 2012 1991 2002 1996 2007 2012 1991 1997 1893 1997 2003 1991 1997 1920 1998 1976 1997 2013 2019 1960 2007 2008 1992 1998 1997 1999 2000 1993 1997 1991 1998 1892 1995 1984 2010 1995 1892 1997 2004 1991 2011 20172020 2013 1999 1999 1991 2000 1995 2003 2006 1949 2006 2001 2015

Advantages The Madrid System allows to file a single international trademark application in one language, and pay one set of fees in one currency, to apply for protection of a brand in multiple territories simultaneously, representing over 80% of world trade. The management of the international trademark portfolio is done centrally and digitally through WIPO.

Disadvantages One disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of the basic application or basic registration within five years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent. For example, if a basic application covers 'clothing, headgear and footwear,' and 'headgear' is then deleted from the basic application (for whatever reason), 'headgear' will also be deleted from the international application. Therefore, the protection afforded by the international registration in each designated member jurisdiction will extend only to 'clothing and footwear.' If the basic application is rejected as a whole, the international registration would also be totally refused.

The process of attacking the basic application or basic registration for this purpose is generally known as 'central attack’. Under the Madrid Protocol, the effects of a successful central attack can be mitigated by transforming the international registration into a series of applications in each jurisdiction designated by the international registration, a process known as 'transformation.' Although transformation is an expensive option of last resort, the resulting applications will receive the registration date of the international registration as their filing date. Concerns about the central attack risk have raised concerns around the entire world, with the International Trademark Association in 2024 urging policy action to “limit the adverse effects of the ‘central attack’ and encourage increased use of the Madrid system.”

Some jurisdictions have enacted local laws to proactively circumscribe the adverse effects of the central attack. For example, in China, the trademark regulations introduce rules that limit central attack risks by requiring a stronger domestic basis and domicile restriction. Specifically, China requires that applicant filing an international trademark registration with China as the country of origin must be domiciled or resident in China or be a Chinese national, and must register or file an application to register their mark with the China Trademark Office before they may apply for international trademark registration pursuant to the Madrid Protocol. Translated in

The cost savings which usually result from using the Madrid system may be negated by the requirement to use local agents in the applicable jurisdiction if any problems arise.

Madrid Protocol

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