Table of Contents
In Short
- The Madrid Protocol allows businesses to register their trade marks in multiple countries through one application, saving time and money.
- It offers a simple, streamlined process but has limitations, like dependency on the UK registration and the exclusion of some countries.
- Priority rules help secure your trade mark rights internationally within a six-month window.
Tips for Businesses
Ensure your UK trade mark registration is solid before applying under the Madrid Protocol, as your international registration depends on it for five years. Check that your target countries are covered by the protocol, and consider professional advice to navigate potential challenges, such as class-specific objections and complex cost structures.
If you operate a business in England, you may have considered expanding your trade mark protections internationally. In this case, you can take advantage of the Madrid Protocol, because it allows you to register your trade mark in multiple national jurisdictions.
Without international registration, your trade mark could be open to competitors using it without any legal recourse for their actions. Registering your trade mark internationally will help protect you from potential infringements. In this article, we will discuss how you can use the Madrid Protocol and why it is advantageous for your business.
What is the Madrid Protocol?
The Madrid Protocol is a useful tool for making simultaneous international applications for trade mark registration in multiple jurisdictions. The first step is to register your trade mark in the UK. You can then use this registration as the basis of an international registration application under the Madrid Protocol. The Madrid Protocol includes many individual countries, but covers three main regions, as outlined below.
| Region | Countries Included |
| Benelux | Belgium, the Netherlands, and Luxembourg |
| European Union | All EU member states, except Malta |
| African Intellectual Property Organisation (OAPI) | Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Côte d’Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal and Togo. |
Advantages of Using the Madrid Protocol
If you register your trade mark in the UK, it will only grant you protection in the UK. Therefore, if you want to protect your trade mark in multiple jurisdictions, you will need to apply for each separately.
1. Time and Money
The Madrid system allows you to make one application for registration across multiple countries and jurisdictions. This saves time and the costs attached to individual applications. Making one application is substantially cheaper than making individual applications for each jurisdiction.
2. Speed
The Madrid Protocol has many member countries whose membership relies upon agreement to examine applications in a timely manner. These timescales are generally within 12-18 months. Therefore, this can be a much faster method of international registration than individual applications for each country.
3. Straightforward Application
Trade mark applications under the Madrid system are very simple and straightforward. One single application using one language and paying one set of fees can provide your business with multi-jurisdictional registration and, consequently, increase your brand’s visibility in an efficient and effective way. The application is based on your original registration in the UK with the Intellectual Property Office, so you will already have a strong basis for the Madrid Protocol application.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
Call 0808 196 8584 for urgent assistance.
Otherwise, complete this form and we will contact you within one business day.
Disadvantages of Using the Madrid Protocol
There are some obstacles and difficulties you should be aware of when seeking to register with the Madrid Protocol.
1. Difficulties with Classes
It is also important to note that a failure to register for a single class bars you from registering your trade mark in the other classes you initially sought to register for. Further, if someone raises an objection within a particular class, you must wait to resolve the objection before you can register with your other classes.
2. Dependency on Home Country Application
If you register your trade mark in the UK, the Madrid Protocol recognises this as your home country application. Your international registration under the protocol will therefore be dependent on this for a period of five years after the international registration. If you abandon or cancel your home application during this period of time, your registration under the protocol will lapse by way of a ‘central attack’.
3. Not Every Country is Covered
It is important to note that not every country is included in the Madrid Protocol, so you should be aware of which countries are included and are not. This will therefore ensure that your business’ expansion goals align with the countries included in the international registration.
Effectiveness of the Madrid Protocol for Your Business
Overall, the Madrid Protocol offers an effective solution for your business to register your trade mark in multiple territories. It certainly provides an efficient and cost-effective mechanism for any business, but you should recognise the protocol’s limitations with care.
The trade mark you seek to register under the Madrid system will also be identical to your original mark, which, therefore, means you cannot expand on its design in any way despite it now being an international trade mark. If you have filed a “series” application in the UK, you will also have to choose only one version to launch internationally.
Priority
In relation to registered trade marks, “priority” refers to a six-month window after the filing date of your UK trade mark application, in which you can claim your UK filing date, even if you actually file internationally at a later point within that window. For example, suppose you filed a trade mark application with the UK Intellectual Property Office (IPO) on 2 April 2024. This means you could submit an application via the Madrid Protocol on 25 August 2024 and “keep your place in line”. In other words, it would be as if you had filed internationally on 2 April 2024.
While it is still possible to submit a Madrid Protocol application after this six-month priority window, you would not be able to back-date your rights internationally.
Key Takeaways
In conclusion, you can use the Madrid Protocol to register your trade mark on an international scale. Many businesses worldwide use this protocol due to its simplicity and efficiency.
Essentially, one application under the protocol is completed to register your trade mark within multiple jurisdictions. You may complete the application in English, French, or Spanish and do not need to complete multiple national applications for every country you intend to register your mark within.
If you are applying from England, your application under the Madrid Protocol will be based on your registration in England. This will be authorised by the IPO. Your mark will be the same as this, and its international registration will depend on it for five years. Therefore, if your trade mark registered in England is cancelled within five years, your international registration will also be cancelled.
If you need help or advice regarding the Madrid Protocol, our experienced intellectual property lawyers can assist you as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page.
Frequently Asked Questions
The Madrid Protocol is a mechanism that allows businesses to internationally register their trade mark in multiple jurisdictions using one application. It is often seen as one of the most efficient methods of international registration for trade marks.
You must have a business or be a citizen of one of the countries covered by the Madrid Protocol. You can find a full list of member countries on the official website. It is advisable to seek legal advice if you are unsure whether you are eligible to submit an application.
The official fees associated with filing a Madrid Protocol application will vary depending on how many countries you elect on your application and how many classes you would like to extend internationally from your base application. The World Intellectual Property Office (WIPO) has an online calculator that can help clarify the costs of filing. As filing internationally can be complex, you may wish to also take into account professional fees to seek legal advice to ensure that your international application is as comprehensive as possible.
We appreciate your feedback – your submission has been successfully received.
