15 Oct What Is Madrid Agreement
As we approach the implementation of a multi-legal (or at least pan-European) Community trade mark (MARK), the relevance of the Madrid system has been put to the test. Pressure on WIPO to maintain its relevance and strengthen the agreement by increasing membership, possibly through changes. This led to the introduction of the Madrid Protocol, according to which a Community trade mark registration could be a “foundation registration” or a “homeland registration”, on the basis of which an international registration could then be established. This mechanism is called “link determination”. The Protocol was signed by many countries as a result of significant lobbying efforts by WIPO, including most of the current members of the Madrid Agreement and some countries that are members of the European Union but were not members of the Madrid Agreement. The minutes were recorded on 1. December 1995 and entered into force on 1 April 1996. The European Union Intellectual Property Office2 treats the designation of the EU somewhat differently from applications submitted directly to it; Details can be found on our separate page. A disadvantage of the Madrid system is that any refusal, withdrawal or deletion of the basic application or registration within five years of the date of registration of the international registration will result in the refusal, forfeiture or cancellation of the international registration to the same extent.
For example, if a basic application covers “clothing, headgear and footwear” and then “head covering” is (for whatever reason) removed from the basic application, “head covering” is also removed from the international application. Therefore, the protection granted by the international registration in each designated Member State extends only to “clothing and footwear”. If the basic application is rejected completely, the international registration will also be completely rejected. In 1966 and 1967, an attempt was made to solve this problem by creating a new treaty that would reflect the needs of the time and not the world of the 1890s when the agreement was adopted. This led to the drafting of the Treaty on the Registration of Marks (TRT), which was adopted in Vienna in 1973 and entered into force in 1980 with five Contracting States, namely Burkina Faso, Congo, Gabon, the Soviet Union and Togo. In the absence of new accessions to the TRT and the small number of registrations since its introduction, it was clear that the TRT would probably not replace the Madrid Agreement. For example, under the Protocol, it is possible to obtain an international registration on the basis of a pending trademark application, so that a trademark owner can effectively apply for an international registration at the same time or immediately after filing an application in a member judicial area. In comparison, the agreement requires the trademark owner to already have an existing registration in a member jurisdiction, which can often take several months or even years. In addition, the agreement does not offer the possibility of “transforming” international registrations that have been “centrally attacked”. Compliance with the Convention or Protocol implies accession to the “Madrid Union”. As of June 2019 [Update], there were 104 members from 120 countries.