1901 Overview of the Madrid System of International Registration
The Madrid system of international registration is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol Relating to the Madrid Agreement, which was adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996. The United States is party only to the Protocol, not to the Agreement.
The Madrid system is administered by the IB. To apply for an international registration under the Madrid Protocol, an applicant must be a national of, be domiciled in, or have a real and effective industrial or commercial establishment in one of the countries or intergovernmental organizations that are members of the Protocol ("Contracting Parties"). The application must be based on one or more trademark application(s) filed in, or registration(s) issued by, the trademark office of one of the Contracting Parties ("basic application(s)" or "basic registration(s)"). The international application must be for the same mark and include a list of goods/services that is identical to or narrower than the list of goods/services in the basic application and/or registration. The international application must designate one or more Contracting Parties in which an extension of protection of the international registration is sought.
The applicant must submit the international application through the trademark office of the Contracting Party in which the basic application and/or registration is held ("Office of Origin"). The Office of Origin must certify that the information in the international application corresponds with the information in the basic application and/or registration, and then forward the international application to the IB. If the IB receives the international application within two months of the date of receipt in the Office of Origin, the date of the international registration is the date of receipt in the Office of Origin. If the IB does not receive the international application within two months of the date it was received by the Office of Origin, the date of the international registration is the date on which the international application is received by the IB. See TMEP §1902.04 for information regarding filing requirements that may affect the international registration date.
The international registration is dependent on the basic application and/or registration for five years from the international registration date. If the basic application and/or registration is abandoned, cancelled, or expired, in whole or in part, during this five-year period, the IB will cancel the international registration accordingly. See TMEP §1902.09 for further information.
The holder of an international registration may request protection in additional Contracting Parties by submitting a subsequent designation. A subsequent designation is a request by the holder of an international registration for an extension of protection of the registration to additional Contracting Parties.
Each Contracting Party designated in an international application or subsequent designation will examine the request for extension of protection as a national trademark application under its domestic laws. Under Article 5 and Common Regs. 16 and 17, there are strict time limits (a maximum of 18 months) for the trademark office of a Contracting Party to refuse a request for extension of protection. If the Contracting Party does not notify the IB of a refusal within this time period, the mark is automatically protected. However, the extension of protection may be invalidated in accordance with the same procedures as for invalidating a national registration, e.g., by cancellation. See TMEP §1904.07 for information about invalidation.
The Madrid Protocol may apply to the USPTO in three ways:
- Office of Origin. The USPTO is the Office of Origin if an international application and/or registration is based on an application pending in or a registration issued by the USPTO. Common Reg. 1(xxvi). See TMEP §§1902 et seq.
- Office of a Designated Contracting Party. The USPTO is the office of a designated Contracting Party if the holder of an international registration requests an extension of protection of that registration to the United States. Common Regs. 1(xvi) and (xxv). See TMEP §§1904 et seq.
- Office of the Contracting Party of the Holder. If the holder of an international registration is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States, the holder can file certain requests with the IB through the USPTO, such as requests to record changes of ownership ( see TMEP §1906.01(a)(i)) and restrictions on the holder’s right to dispose of an international registration ( see TMEP §1906.01(b)). The expression "Contracting Party of the Holder" includes the "Office of Origin," as well as any other Contracting Party in which a holder is a national, is domiciled, or has a real and effective industrial or commercial establishment. Common Reg. 1(xxvibis).