The Madrid Agreement and the Madrid Protocol
The Madrid system of international registration of marks is governed by two treaties: the Madrid Agreement, concerning the International Registration of Marks, which dates from 1891, and the Madrid Protocol, which came into operation on April 1, 1996. The system is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
The international mark allows by a simple procedure which is centralized by the WIPO to obtain a set of marks in more than 60 countries.
These countries can be linked by the Agreement, or by the Protocol, or by both systems, which implicates some differences of proceedings depending on the designated countries.
The basic mark
France is member of both Agreement and Protocol, thus a mark can be the object of an international registration:
- either based on a registered French mark if one of the designated countries is member of the Agreement,
- either based on a French mark application or a registered French mark if all designated countries are exclusively member of the Protocol,
If the basic mark is a first application, the international application can benefit from its priority date if it is filed within a six-month period.
To choose the countries
The countries which were not designated at the filing date may be designated subsequently, even after registration of the mark.
Proceeding
The international mark is filed at the WIPO via the French Office (INPI).
In the absence of irregularity, the WIPO registrates the international mark which is published in the WIPO Gazette of international marks. The WIPO then notifies the national Offices of the designated countries. Each Office has the right to refuse the protection of the international registration in its territory (total or partial reject of the sign filed for the designated goods or services according to the country's law) or can transmit the opposition made by a third person (which opposition proceeds also according to the country's law).
The national Offices have to notify the eventual refusal and oppositions to the WIPO within a period of 12 months according to the Agreement, and of 18 months (or more for an opposition) according to the Protocol.
Validity
The international mark is valid for 10 years from the filing date and may be renewed indefinitely.
The subsequent extensions to countries that were not designated at the filing date, have effect at the date they were asked for at the INPI and they expire with the international mark.
Dependence between the international mark and the basic mark
For a period of 5 years from the date of its registration, an international registration remains dependent on the basic mark. A loss of the rights on the basic mark entails the loss of the corresponding rights on the international mark. In the countries member exclusively of the Protocol, the international mark may then be transformed into national applications benefiting from the date of the international registration and, where applicable, its priority date.
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