June 27, 2019
Thursday, June 27, 2019, is the 30th anniversary of the adoption of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the "Protocol").
Over three decades, the Protocol has steadily and successfully brought more flexibility to the Madrid System. It has improved the international registration process significantly for the ever-growing number of trademark holders and their intellectual property (IP) offices, and continues to pioneer and innovate with fresh insights and new technologies. With the Protocol came a rapid increase in registration numbers, rising to 20,000 in 1998, before tripling to over 60,000 just 20 years later in 2018.
Though intrinsically linked, the Madrid Agreement Concerning the International Registration of Marks (the "Agreement") and the Protocol are separate treaties. Both support the Madrid System’s overarching purpose – to provide a convenient, cost-effective and centralized process for registering and managing trademarks worldwide – but there are key differences between the two treaties that make this 30th anniversary of the Protocol worthy of mention and celebration.
For example, the adoption of the Protocol in 1989 opened the door to countries or intergovernmental organizations that until then had not been able to join the Madrid Union because of Agreement limitations.
In 1988, there were only 25 members of the Madrid Union. Today, that number has quadrupled, with 104 members of the Madrid System, covering 120 countries. And there are many more countries preparing to be part of this success story.
In the 30 years since adoption of the Protocol, the Madrid System has expanded its geographical scope with the addition of:
Learn more about the Madrid Protocol and three decades of growth in our recently released Madrid Yearly Review 2019.
As membership of the Protocol continues to rise, trademark owners benefit increasingly from having one centralized system with standardized and streamlined processes. For example, unlike the Agreement, the Protocol allows trademark owners to file an application for an international registration based on a trademark application filed with the IP office of their home country or region, and not only on a granted trademark registration. This reduces the delay in filing an international application and makes it easier for trademark owners to take advantage of the six-month priority period of the Paris Convention.
Meanwhile, the multi-lingual aspect of the Protocol significantly improves the System for trademark holders, who can file applications in English, French or Spanish; with the Agreement, the only option was French.
Also, the transformation provisions in the Protocol give trademark holders increased reassurance if their international registration is cancelled, on the basis that the basic mark ceases to have effect within the first five years of its registration.
IP offices have adopted the Protocol with great enthusiasm, for several reasons. For example, they can extend the decision time for granting protection from 12 to 18 months, and set individual fees that more closely match their national application and registration fees, rather than comply with the fixed fees of the Agreement.
Adoption of the Protocol was without doubt the key to the evolution and success of the Madrid System. It contributed significantly to the System’s global expansion – both in terms of attracting new members, and supporting existing members looking to protect their marks in global markets.
Thirty years on, the success of the Protocol continues to pave the way for enhanced services, better efficiency in the administration of the Madrid System, and a globally recognized and standardized solution for trademark protection.
Our ambition at WIPO is to reinforce the Madrid System as the go-to solution for managing trademarks internationally.David Muls, Madrid Registry Senior Director