"How to Transform International Registrations Under the Madrid Protocol" By Robert P Felber Jr INTA Bulletin 

May, 2018 - Bob Felber, Robert "Bob" P. Felber, Jr.

The Madrid system for the International Registration of trademarks is a convenient and economical system for applicants in member countries to secure trademark registrations in other member countries throughout the world. There are 98 contracting parties to the Madrid Protocol, covering 114 countries, including the United Kingdom, the United States, Mexico, China, and much of Europe and the Pacific Rim (http://www.wipo.int/madrid/en/). The International Registration system is administered by the World Intellectual Property Organization (WIPO) through its International Bureau (IB).

Uniformity and Efficiency
By establishing a system through which an applicant may seek trademark protection in multiple jurisdictions through a single filing with the trademark office in the applicant’s country of origin, the Protocol facilitates uniformity and efficiency. The many benefits of the system include elimination of the high cost of pursuing independent national applications; simplification of registration renewals; and
simplification of the recordation of assignments, name changes, and address changes.

Dependence on Basic Application or Registration
Although the system has many benefits, using the Protocol does come with some risks. One of those risks relates to the fact that an international application governed by the Protocol must be based on either an application filed with or a registration issued by the national trademark office of a contracting party to the Protocol (Office of Origin) (Article 2(1) of the Madrid Protocol). This is referred to as the basic application or the basic registration. For a period of five years following the date of an International Registration, the International Registration is dependent on the validity of the underlying basic application or basic registration. For the purposes of counting the five-year dependency period, the International Registration will, as a rule, bear the date on which the international application was received by the Office of Origin (Article 3(4) of the Madrid Protocol).


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