The system of international registration of marks is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement (the “Madrid system”).
The Madrid system facilitates the obtaining of protection for marks in several countries by filing one application, in one language, and paying one fee instead of filing separately in the trademark Offices of the various Contracting Parties in different languages and paying a separate fee in each Office.
The effects of an international registration can be extended to a Contracting Party not covered by the international application by filing a subsequent designation.
A further important advantage is that changes subsequent to registration, such as a change in the name or address of the holder, or a change (total or partial) in ownership or a limitation of the list of goods and services may be recorded with effect for several designated Contracting Parties through a single simple procedural step and the payment of a single fee. Moreover, there is only one expiry date and only one registration to renew.
Nevertheless, it is important to point out that:
1. A mark may be the subject of an international application only if it has already been registered (or, where the international application is governed by the Protocol, if registration has been applied for) in the Trademark Office of one of the Contracting Party with which the applicant has a connection through establishment, domicile or nationality. This Office is referred to as the Office of origin.
2. An international registration is equivalent to a bundle of national registrations. Although it is a single registration, protection may be refused by some of the designated Contracting Parties, or the protection may be limited or renounced with respect to only some of the designated Contracting Parties. Likewise an international registration may be transferred to a new owner with respect to only some of the designated Contracting Parties. An international registration may also be invalidated (for example, for non-use) with respect to one or more of the designated Contracting Parties. Moreover, any action for infringement of an international registration must be brought separately in each of the Contracting Parties concerned.
An international registration is effective for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees. The international registration may be renewed in respect of all the designated Contracting Parties or in respect of only some of them.