What Do I Need to Know About the Madrid Protocol?

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 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 application under the Madrid Protocol for international registration. The Madrid Protocol includes many individual countries, but covers three main regions, as outlined below.

Advantages of Using the Madrid Protocol

If you register your trade mark in England, 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 is reliant 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 in comparison to 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 England with the Intellectual Property Office, so you will already have a strong basis for the Madrid Protocol application.

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 will need to 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 England, 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 not every country is included in the Madrid Protocol, so you should be aware of which countries are and are not included. 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. For example, as the protocol has not included every country, you might need to submit independent national applications for each country you wish to recognise and protect your trade mark. 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.

Key Takeaways

In conclusion, you can use the Madrid Protocol to register your trade mark on an international scale. Many businesses worldwide opt to use this protocol due to its simplicity and efficiency.

Essentially, one application under the protocol is completed in order to register your trade mark within multiple jurisdictions at once. You may complete the application in English, French or Spanish and do not need to therefore 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 Intellectual Property Office. Your mark will be the same as this, and its international registration will also be dependent 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.

This, among other important disadvantages, should be considered prior to applying under the Madrid Protocol. If you need help or advice around the Madrid Protocol, our experienced intellectual property lawyers can assist 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.

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