Madrid Agreement

The Madrid Agreement allows a trademark registered in one country to be registered in other countries and territories. The Madrid system comprises two treaties: the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol Relating to the Madrid Agreement, which came into operation on April 1, 1996. The full name of the system of treaties is "Madrid Agreement Concerning the International Registration of Marks of April 14, 1891 (as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Nice on June 15, 1957, and at Stockholm on July 14, 1967)".

The Madrid Agreement provides for international registration of trade marks. This is very useful for trademark owners who engage in international trade and wish to gain protection in other countries for their brand, or have built up a reputation in a mark which transcends borders and want to protect intellectual property pirates from appropriating their mark.

The Agreement originally intended to provide for an international registration system, but did not achieve this for two significant reasons:

• the lack of international acceptance. Many non-member countries, including the United Kingdom, the United States, and Central American, South American and Asian countries, such as Japan, were not adherents, which undermined recognition of the system as a truly "international" regime. Significantly, many of these countries are amongst the world's foremost sources of trade mark registrations;

• the International Bureau's mere forwarding of a uniform application to the various member countries rather than registering them in national trademark registers precludes this from being an actual "registration" system.

Certain of the commercially important non-member nations like the United States, Japan, and Canada, which have a large number of filings at the national level, did not adhere to the Madrid Agreement because of what was perceived as a flaw in the system: if the home registration is attacked on the basis of invalidity or non-use, all of the international registrations will also fall over.

During 1966-1967 attempts were made to change this situation by establishing a treaty that would reflect the need of the times rather than the world of the 1890's when the Agreement was adopted. This led to the drafting of the Trademark Registration Treaty (TRT) which was adopted in Vienna in 1973 and entered into effect in 1980 with five contracting states, namely, Burkina Faso, Congo, Gabon, Soviet Union and Togo. In the absence of more accessions to the TRT and the low number of registrations since its inception, it was clear that the TRT was unlikely to supplant, or even stand beside, the Madrid Agreement.

As the realisation of the introduction of the multi-jurisdictional (or at least pan-European) European Community Trade Mark[?] (CTM) approached, the relevancy of the Madrid system came under scutiny. Pressure increased on WIPO to maintain its relevance and strengthen the Agreement by increasing membership of the Madrid Agreement, or by bringing about some amendment which would increase its membership. A change, called the Madrid Protocol, was introduced whereby a CTM registration could be a "foundation" registration on which a Madrid International registration would be established. This proposition is referred to as the "linking provision." The Protocol, after considerable lobbying efforts by WIPO, has been signed by many countries, including most of the present members of the Madrid Agreement, and some countries that are members of the European Communities, but not of the Madrid Agreement. The Protocol entered into force on December 1, 1995 and became operative on April 1, 1996.

In order to adhere to the new Protocol, many countries have recently modified or contemplated modifying their trademark laws, in addition to the modifications required by GATT-TRIPS/WTO. The United States amended its law to accept trademark applications on the basis of a bona fide intent to use (an "ITU" in US trademark law[?] terminology). This was a significant accomplishment in the face of fierce parochial resistence by the US Congress at being "pushed around by Europe". The treaty has yet to be ratified by US President Bush. Japan revised its trademark law with the official introduction of the International Classification[?] system and service marks. The members of the European Community have amended their laws to conform to the European Community Harmonization Directive[?]. Trademark laws in several other countries, e.g. India, New Zealand, Malaysia and South Africa have also been amended to accommodate the changes.

As a 10 April 2003, 57 countries were members of the Madrid Agreement. South Korea was the most recent nation to join (on 10 April 2003).

Additional Resources

• The World Intellectual Property Organisation's web-page on the Madrid Agreement (http://www.wipo.int/treaties/registration/madrid/index)

• [(http://www.inta.org/madrid/index.shtml The International Trademark Association's website on the Madrid Agreement (including latest developments)]