Overview of the Madrid System

USPTO GIPA23 October 2013

Alan Datri

Senior Counsellor

Slide updated 10/25/13.

Madrid Systemfor the

International Registration of Marks

• Madrid Agreement (1891)

• Madrid Protocol (1989)

– As amended on October 3, 2006, and on November 12, 2007

• Common Regulations• Administrative Instructions

• National Laws and Regulations

www.wipo.int/madrid

Contracting Parties

1 Agreement only37 Protocol only (including EU)54 Agreement and Protocol

92 Members

Centralization

Centralized system for the acquisition, maintenance and management of trademark rights by filing a single international application for a single international registration in which one or more Contracting Parties are designated.

Allows right holders to target national, regional or global markets with respect to particular goods and services.

Cost-effective and efficient, thereby creating opportunities that would not otherwise exist for any enterprise with a limited legal budget, be it small, medium or large.

Applicant

Territory A

Territory B

Territory C

Applicant

Territory A

Territory B

Territory C

Office A

Office B

Office C

Centralization

National/Regional Route International Route

Centralization

• one Office for filing

• one language• one currency

• one int. registration

• one renewal*

• one modification*

• foreign attorney or agentfirst needed if refused

• many Offices for filing

• many languages• many currencies

• many registrations

• many renewals*

• many modifications*

• foreign attorney or agentfirst needed at filing

National/Regional Route International Route

* Maintenance (renewal) and management (requests for modification such as change of name and address; transfer of ownership; limitation, renunciation or cancellation of goods and services or designs; appointment of representative, etc.).

AcquisitionBasic Mark

InternationalApplication

OFFICE OFDESIGNATED

CONTRACTINGPARTY

OFFICE OF ORIGIN

OFFICE OFDESIGNATED

CONTRACTINGPARTY

SUBSTANTIVE EXAMINATION

FORMALITIES EXAMINATION

International RegisterCertificate of International Registration

PublicationNotification

CERTIFICATION

INTERNATIONALBUREAU

Maintenance and Management

Renewal (10-year) – MM11

Subsequent designation – MM4

Subsequent designation from conversion (EU) – MM16

Record change in ownership – MM5

Limit G&S in one or more designated Contracting Parties – MM6

Renounce all G&S in one or more designated Contracting Parties – MM7

Cancel G&S – MM8

Change of name and/or address of holder – MM9

Change of name and/or address of representative – MM10

Appointment of a domestic representative – MM12

Record license – MM13

Record restriction on right of ownership – MM19

Slide updated 10/25/13.

Additional Features

Dependency; Ceasing of Effect; Independence

Article 6; Rule 22

Transformation

Article 9quinquies

Replacement

Article 4bis; Rule 21

Slide updated 10/25/13.

Keeping it in Perspective

Simple in conceptAccommodates business models that need to reduce costs not only in the initial filing, but also in the maintenance and management of a right

Can be complex in implementation and useNot surprising in what it seeks to accomplish, namely, to provide centralized access to different national and regional design systems

Practitioners, Practitioners, PractitionersProper functioning system depends on the advice of a knowledgeable practitioner, whether legal or paralegal or in house or outside counsel

Slide updated 10/25/13.

Thank You

Alan M. DatriSenior Counsellor

Office of the Deputy Director General

alan.datri@wipo.int