Countries and organizations that are party to the Madrid System are collectively referred to as Contracting Parties. This system makes it possible to protect trademarks in a large number of countries by obtaining an international registration that has effect in each of the designated Contracting Parties.
Only natural or legal persons who have a connection with the Madrid Agreement or the Madrid Protocol by reason of their establishment, residence or nationality may file an application for international registration (international application). An international application may be filed for a mark only if it has been registered with the trademark office of a Contracting Party with which the applicant has a necessary connection (called the “Office of origin”). However, if all designations are made under the Madrid Protocol, the international application may be based solely on an application for registration filed with the Office of origin. The international application must be filed with the International Bureau of the World Intellectual Property Organization through the Office of origin.
The international application must designate one or more Contracting Parties in which protection is claimed. Further designations may be made later. The designated Contracting Parties must be members of the same treaty as the Contracting Party whose Office is the Office of origin. The latter Contracting Party may not itself be designated in the international application.
The designation of a Contracting Party may be made under either the Madrid Agreement or the Madrid Protocol, depending on which treaty the Contracting Parties in question are parties to. If two Contracting Parties are members of both the Madrid Agreement and the Madrid Protocol, the designation will be governed by the Madrid Protocol.
International applications may be filed in any of the following languages: English, French or Spanish, regardless of the treaty to which they are governed, unless the Office of origin has limited the choice of one or both of these languages.
International applications are subject to the payment of a basic fee (reduced to 10% for applicants whose country of origin is a least developed country as determined by the United Nations); a supplementary fee for each class of goods and/or services other than the first three; and a complementary fee for each designated Contracting Party. However, a Contracting Party to the Madrid Protocol may declare that, for designations made under the Madrid Protocol, the complementary fee shall be replaced by a separate fee, the amount of which shall be determined by the Contracting Party concerned, but shall not be higher than the fee payable for a national trademark registration at its competent office. Regarding international registration issues: Once the International Bureau receives an international application, it will examine it to determine whether it complies with the requirements of the Madrid Agreement, the Madrid Protocol and their Common Regulations. This review is limited to form, including whether the list of goods and/or services is easy to classify and understand. If there are no irregularities in the application, the International Bureau will register the trademark in the International Register, publish the international registration in the WIPO International Marks Bulletin (hereinafter referred to as the “Bulletin”), and notify each designated contracting party of the international registration. As for all substantive issues such as whether the trademark meets the protection conditions in a certain contracting party or whether there is a conflict with a previously registered trademark, the trademark office of the contracting party shall decide according to the applicable domestic legislation. The electronic version of the Bulletin is available on the Madrid System website.