WIPOD – International Trademark System Talks: Transcript of Episode 4

A History of Trademarks: An In Depth Look at the Madrid Agreement

Hi and welcome to International Trademark System Talks, a brand new podcast brought to you by WIPO’s Madrid System Information and Promotion Division. This podcast will give you insights into the International Trademark System, also known as the Madrid System.

My name is Olivier Pierre and I will be your host.

In our previous episode, we covered the Madrid Conferences of 1890 and 1891. Today, we will go over the Madrid Agreement and will tell you in detail what it is. Don’t worry, this will be the most entertaining Law class.

Remember our previous episode? We talked about the Diplomatic Conferences held in Madrid in 1890 and 1891, where delegations discussed (and some signed), the International Trademark System Agreement, later known as the Madrid Agreement. These delegations also had time for several lunches, meetings, and even a ball with the Spanish queen. Not everything was about work.

As a matter of facts, many were reluctant to believe that an agreement could be reached during the Madrid Conferences. As an example, the Spanish newspaper El Pais, in a critical article on April 7, 1890 literally stated: “There are some who expect from this Conference resolutions of importance for Spain and considerable practical results for our industry. We believe, on the contrary, that we will remain as we were. We hope we are wrong." Thankfully, they were completely wrong and the Madrid System actually exists.

Back to the Agreement. The first draft was written by Switzerland and therefore, we will call it the Swiss proposal.

A bit of context about Switzerland. At the time, in the 1890’s, the country was full of entrepreneurs and it had a growing industry. You may remember the story of Patek Philippe, since we spoke about it in the first episode of this podcast series. Well, That company won several prizes in international exhibitions, and as a result the Swiss watch industry became internationally renowned.

If you’ve ever been to Switzerland, you may know the country for its watches and its chocolate (and perhaps Roger Federer, although he was born much later). You might also be familiar with one of the most popular chocolate brands in Switzerland: Suchard, founded by Mr. Philippe Suchard in 1826 (as you can see, they did not overthink the brand name, didn’t they?). So, Suchard also happens to be the first internationally registered trademark with the Madrid System. The brand became extremely popular in 1842, thanks to a large order from Frederick William IV, King of Prussia, who was also the Prince of Neuchâtel, a town and canton in the French-speaking region of Switzerland. Luck was definitely on Suchard's side, and their chocolates won the best prize at the Great Exhibition in London in 1851 and at the Universal Exhibition in Paris in 1855. We talked about these two exhibitions in our first episode, remember?

Back to the “Swiss proposal”. The Swiss delegation proposed that, as the owner of a registered trademark in your Office of origin, (which for Philippe Suchard would be Switzerland), if you wanted to register your trademark in other member countries of the Madrid Agreement, like France or Spain, you could file directly with the International Bureau without filing through the Office of origin, again in our example, the Swiss Office.

Italy, probably more aware of the picaresque nature of their citizens, proposed that instead of filing for international registrations directly with the International Bureau, trademarks should be filed via the national Administration where they were first applied for. In this case, Monsieur Suchard would file an international application through the Swiss Office.

The aim of the Italian amendment to the original Swiss proposal was to enable national Administrations to fix and collect the fees that persons living in, or commercially based on, their territory would have to pay for the preliminary registration. However, they needed to agree on the costs of the international administration of the Agreement. This was a very long discussion as you can imagine, and it was agreed at 200 Swiss francs of the time, which would be around 600 Swiss francs today (considering inflation), pretty much like the current Madrid System basic fee.

Switzerland, as a supervisor of the International Bureau, was mandated to write the Regulations and the Agreement. The Swiss delegation was not so happy about it but took on the task. The delegation circulated the new draft Regulations in time for the approval of the signatory States before the Diplomatic Conference.

Let’s clarify a point here. We have been talking about the Conferences and named participating States that, actually joined the Madrid System much later. These countries were members of the Paris Union: for example, the United States of America and Brazil. These States had representation during the Madrid conferences and some even voted in favor of the Agreement, but in 1891, they did not ratify it. Some did ratify the Agreement immediately after, and for others it took 100 years, literally, but we will talk about this in the next episode

Let’s have a quick look at the Madrid Agreement, which consisted of 12 Articles only. As we mentioned in the first episode, this was the era of international treaties. There were many other treaties at the time, for example, the Treaty of Bern for the postal services of 1874. Yes, we’ve been exchanging letters since ancient Egypt and we had something similar to postal services since the 1^st Century BC, when the Romans had these big roads built, the ones that we still use to this day in Europe. However, just like with trademarks, there was only one international treaty about postal services in force during the XIX century.

Back to the Madrid Agreement. We will go article by article. Let’s begin… Article 1. I’m kidding. I said this was going to be an entertaining legal class. We will just go over the basic elements, with examples to make it more digestible.

There are seven main elements: it seems like a lot, but it’s an Agreement of the XIX century and it is administrative. However don’t worry, we made the explanation as short as possible.

First, a basic mark is a mark that is registered in one contracting party. –A trademark holder will use this basic mark to seek protection in other member countries that are part of the Agreement.. At that time, there already were very renowned trademarks around the World such as Levi Strauss in the United States of America, Marks and Spencer, Durex or Burberry in the United Kingdom, the Santander bank or the Freixenet Cava in Spain and Cartier in France.

Second: The entitlement to use the Madrid System or, in other words, the right to use the Madrid System. You could use it only if you were a citizen of a member country of the Madrid System, such as Mr. Suchard from Switzerland, Mr. Botin, the founder of the Santander bank in Spain for example. This principle also applied if they had or owned a company in a member country of the Madrid System.

Third: The Madrid System allowed, with some procedures, the filing of an international application based on the basic mark and obtaining an international registration. The filing procedures became more and more sophisticated, but one of the main changes before the online filing was the introduction of a classification of goods and services, much later in 1957.

Fourth: In the past, the international registration would give you protection in all member countries of the Madrid System if granted. This principle evolved. Now you need to choose or designate (this is common WIPO language) the states in which you are seeking protection.

Fifth: The right of designated member countries to refuse the protection of the international registration on certain grounds. The grounds have to be the same to the ones they have for national trademarks. A silly example, right now, in some countries marijuana is illegal, so they will refuse a brand for recreational marijuana even if protection has been granted in other countries.

Sixth: The dependency period. During 5 years, the basic mark and the international registration are dependant. Everything that happens to the basic mark will happen to the international registration. In other words, if you lose the basic mark, you will also lose the international registration. After that 5-year period however, they become independent and the fate of the international registration does not depend any longer on the fate of the basic mark.

Seventh: The possibility of an unlimited duration of the international registration, from its registration date. The duration is unlimited if you renew it in time, obviously. We have a trademark still in force today, that was registered at the International Bureau in 1893. Which one, you may ask? You will have to wait for the next episode.

In this episode, we took a deeper look at these conferences and went over the main principles of the Madrid Agreement. We tried our best to make it interesting and fun. We hope we succeeded.

In the next episodes, we will be talking about the first states that joined the Madrid Agreement, the first internationally registered trademarks and a specific one registered in the XIX century that is still in force today. All this and more in our next episodes of International Trademark System Talks.

This takes us to the end of today’s episode. Thank you for listening and if you have any suggestions or any topic you want us to discuss, please let us know. Subscribe to our podcast to be notified of new episodes. See you next time on International Trademarks System Talks. Olivier Pierre out!