WIPOD – International Trademark System Talks: Transcript of Episode 10

The birth of the Madrid Protocol

Hello and welcome to International Trademark System Talks, the podcast brought to you by WIPO’s Madrid System Information and Promotion Team. 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.

Introduction

The effectiveness of the Madrid Agreement is undeniable, evidenced by the substantial yearly increase in international registrations for nearly 100 years!

However, following the Stockholm Act of 1967, it became clear that the Agreement’s capacity to attract a broader membership and develop into a comprehensive global system was somewhat limited. It was difficult to live up to the “international” billing when large trading markets such as the United States of America, Japan, the United Kingdom, most Latin American countries, just to name a few, were missing from the list of members.

By 1986, when negotiations for a parallel treaty to the Madrid Agreement began, the Agreement only had 29 member countries.

At the same time, the global economic landscape was experiencing significant shifts. The growing integration of markets, the formation of new economic blocs, and the emergence of regional organizations all highlighted the need for a more inclusive and universally applicable international trademark registration system. Such a system would need to include a broader geographical area to align with the dynamic and ever-evolving global economy.

Establishing trademark registration treaty as an independent registration system

The initial effort to create a universal system in modern times was embodied in the Trademark Registration Treaty (TRT), adopted at the Vienna Diplomatic Conference on June 12, 1973. This approach strategically opted for a brand-new treaty, independent of the Madrid system, yet aiming at integrating several beneficial aspects of the Madrid system into its framework.

Under the TRT an international application wasn’t required to be based on a previously registered national mark. Therefore, from the outset of the international registration, its validity was independent across all participating countries. Similar to the Madrid Agreement, the effect of the international registration under the TRT was equivalent to a national application in each designated country. Moreover, these countries reserved the right to reject the international registration within a predetermined timeframe.

Though the TRT came into effect in 1980, its adoption remained limited, with only the initial five countries (Burkina Faso, Congo, Gabon, Togo, and the Soviet Union, later succeeded by the Russian Federation) ratifying it. As a result, the TRT fell short of its aim to establish a universally applicable system for the international registration of marks. During its Seventh Session on October 2, 1991, the Assembly of the TRT Union made a significant decision: from that date forward, they would no longer accept any new ratifications of, or accessions to, the TRT.

Following the recognition of the TRT’s limited success in expanding its reach and appeal, a reevaluation of strategy seemed inevitable. This realization sparked a journey of innovation and collaboration, leading to a pivotal moment in the history of international trademark law. It was in this context that the story of the Madrid Protocol began to unfold, born from the lessons learned and the aspirations for a more inclusive and effective system.

Innovative idea of establishing a new treaty parallel to the Madrid Agreement

Between 1986 and 1989, a group of governmental experts convened by WIPO embarked on a series of lengthy discussions. It was during these gatherings that an innovative idea took shape – the creation of a treaty parallel to the existing Madrid Agreement. This new treaty, envisioned as a protocol, would be rooted in the Madrid Agreement but with essential modifications. The aim? To entice certain non-member countries to join the Madrid system. Quite simply!

This protocol wasn’t just an open door for new countries. It also offered a unique opportunity for existing members of the Madrid Agreement. These countries could embrace the new protocol while maintaining their commitment to the Madrid Agreement, which would continue operating as usual. In essence, they could have the best of both worlds.

The brilliance of this arrangement lay in its administrative simplicity and inclusiveness. Countries that joined the new protocol would automatically become part of the Special Union created by the Madrid Agreement, ensuring a unified platform for discussion and decision-making. Thus, in the realm of international trademark registration, a new chapter began, heralding a more inclusive and cooperative era.

After extensive and comprehensive debates starting in 1986, and in a nod to the original Madrid Agreement of 1891, the new treaty idea materialized again in Madrid, Spain on June 28, 1989, with the adoption of 'the Madrid Protocol.’ This protocol amended some aspects of the Madrid Agreement that were widely considered barriers to the expansion of the Madrid Union’s membership. These aspects in brief are:

Enabling international applications based on national/regional applications

The first major change introduced by the Madrid Protocol addressed the foundation of international trademark registration. Under the Madrid Agreement, an international application was required to be based on an existing national registration. However, the Protocol expanded this requirement, allowing the international application to also be based on a national/regional application, in addition to an existing registration. This amendment was particularly beneficial for countries where their Offices conduct an ex officio examination of applications, assessing both absolute grounds and potential conflicts with prior rights. In such systems, processing an application often exceeds six months. Therefore, meeting the six-month priority period stipulated by the Paris Convention for filing an international registration based on national registration posed significant challenges. The Madrid Protocol’s modification effectively accommodated these longer processing times, easing the path to international registration.

Extending the refusal period for international registrations

The Madrid Protocol introduced its second major amendment by lengthening the periods for refusal. This modification aimed to support countries where IP Offices perform detailed ex officio examinations. Under such circumstances, the one-year limit set by the Madrid Agreement for refusals of international registrations was deemed too short. To remedy this, the Protocol increased the refusal timeframe to 18 months, with provisions for an extended period in cases of opposition.

Adding the individual fee structure concept to existing standard fees under the Madrid Agreement

The third change introduced by the Madrid Protocol concerned the Madrid Agreement’s fee structure. This modification was crucial for members where a thorough ex officio examination of applications takes place. To sustain the financial resources needed for such an examination system, these members found it essential to obtain a fee comparable to their domestic fee for each designation. In response, the Madrid Protocol allows the IP Office of a designated Madrid System member the option to collect either the entire fee or a significant portion of what they would typically charge for a national registration.

Transformation of an international registration into a national registration

The fourth modification fixed the big issue of the central attack within the Madrid System. The system relies on a member's own registration of a trademark before it can be registered internationally. But sometimes, if the original registration is canceled in its home country for reasons that only apply there, it could lead to the loss of the international registration everywhere else. This seemed unfair; therefore, changes were made to prevent that from happening.

The Madrid Protocol tackles this issue by permitting a failing international registration to be converted into individual national applications in each designated Madrid System members. It allows a holder, whose international registration gets canceled due to the termination of the basic mark, to maintain protection in the designated members.

Bridging the Madrid System with regional trademark systems

In addition to the modifications mentioned earlier, the Madrid Protocol also sets the groundwork for a connection between the Madrid System and regional trademark systems. This change allowed regional organizations such as the European Union Intellectual Property Office (EUIPO), with its 27 member countries in 2024, to join the Madrid Protocol. The “Organisation Africaine de la propriété intellectuelle (OAPI)”, with its 17 member countries in 2024, mainly in the francophone West African region, is also Madrid System member since March 5, 2015, significantly growing the reach of coverage of the International Trademark System on the African continent.

Conclusion

In this episode we have explored the major changes that have been implemented to suit the Madrid Protocol to cater to an ever-changing world, while building on the strong foundations already set by the Madrid Agreement.

This development highlights the spirit of cooperation and adaptation set by the brilliant minds that got together with this innovative idea of creating an international system that would foster creativity, innovation, and cooperation among nations.

We can, in confidence, say that these changes have been positive as memberships skyrocketed from 29 in 1986 to 114, as we speak, in 2024.

Today, the Madrid System gives anyone who applies, access to 130 countries Worldwide, covering more than 80% of world trade. New countries also join every year, further expanding the geographical coverage of the Madrid System. Will we cover the entire world one day? In my opinion, it’s only a matter of time.

Outro

This takes us to the end of today’s episode and conclusion of our first series on the history of the Madrid System. 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 releases.

This episode was prepared with Hojjat Khademi. Recorded, mixed, and musically engineered by Christophe Ioannitis-McColl.

See you next time for the next episodes of International Trademark System Talks. Olivier Pierre out!