- The Madrid Agreement of 1891 has 55 member countries and along with the Madrid Protocol makes up the ‘Madrid System’ for the International Trademark Registration. The Madrid Protocol of 1989 has 98 parties.The World Intellectual Property Office (WIPO) is the portal for the administration of policies regarding and processing of international applications.
The Madrid Protocol and Agreement are parallel systems – where a country is a signatory to both the protocol will take precedence.
2. There is no such thing as an “internationally effective” trademark.
While the Madrid System certainly provides convenient access to a large number of regions in which you can enjoy protection, there is no system that can provide you with a truly international trademark.
WIPO will formally examine your trademark application, however, each contracting party (country) in which you apply to register will have the opportunity to examine the application under their system. You may still end up dealing with a number of contracting offices in different countries.
3. Your international trademark is dependent on your domestic registration for the first 5 years
While a great deal of debate has taken place in recent years on this topic, currently, protection for your international trademark registration will be dependent on your domestic registration in the Office of Origin.
Should anything untoward occur with your home registration in the first 5 years of your international registration, it will be impacted too. If another company can find a valid reason to do so and apply to have your home registration cancelled within the dependency period, you could lose your international registrations too. This process is known as a ‘central attack’.
4. You can add more countries later
Once you hold an international registration, you may designate additional “contracting parties” in a subsequent designation. What is a subsequent designation?
It’s a request made by you the holder for an extension of protection of your original international registration. Such requests for amendments can be made directly to the World Intellectual Property Office through their Subsequent Designation system.
5. Registration and usage terms are generous.
An International Trademark Registration in India lasts for 10 years from the date of registration.
You are permitted up to 5 years before proof of use may be required where such use is not a requirement of registration in any contracting regions.
It may be renewed for additional 10-year periods for a renewal fee.