Overview of the Madrid System of International Registration

The Madrid system of international registration is governed by

two treaties:  the Madrid Agreement Concerning the International Registration of Marks

(Madrid Agreement), which dates from 1891, and the Protocol Relating to the Madrid

Agreement Concerning the International Registration of Marks (Madrid Protocol), which was

adopted in 1989, entered into force on December 1, 1995, and came into operation on April

1, 1996.  The United States is party only to the Protocol.

The Madrid system is administered by the IB.  To apply for an

international registration under the Madrid system, an applicant must be a national of, be

domiciled in, or have a real and effective industrial or commercial establishment in one of

the countries or intergovernmental organizations that are members of the Madrid Protocol

(Contracting Parties). The application must be based on one or more trademark

application(s) filed in, or registration(s) issued by, the trademark office of one of the

Contracting Parties (basic application(s) or basic registration(s)). The international

application must be for the same mark and include a list of goods/services that is

identical to or narrower than the list of goods/services in the basic application(s) and/or

registration(s).  The international application must designate one or more Contracting

Parties in which an extension of protection of the international registration is

sought.

The applicant must submit the international application

through the trademark office of the Contracting Party in which the basic application(s)

and/or registration(s) is held (Office of Origin).  The Office of Origin must certify that

the information in the international application corresponds with the information in the

basic application(s) and/or registration(s), and then forward the international application

to the IB.  If the IB receives the international application within two months of the date

of receipt in the Office of Origin, the date of the international registration is the date

of receipt in the Office of Origin

at

the information in the international application corresponds with the information in the

basic application(s) and/or registration(s), and then forward the international application

to the IB.  If the IB receives the international application within two months of the date

of receipt in the Office of Origin, the date of the international registration is the date

of receipt in the Office of Origin.  If the IB does not receive the international

application within two months of the date it was received by the Office of Origin, the date

of the international registration is the date on which the international application is

received by the IB.  See

TMEP

§1902.04

for information regarding filing requirements that may

affect the international registration date.

The international registration is dependent on the basic

application(s) and/or registration(s) for five years from the international registration

date.  If the basic application(s) and/or registration(s) is abandoned, cancelled, or

expired, in whole or in part, during this five-year period, the IB will cancel the

international registration, in whole or in part, accordingly.  See

TMEP §1902.09

for further

information.

The holder of an international registration may request

protection in additional Contracting Parties by submitting a subsequent designation.  A

subsequent designation is a request by the holder of an international registration for an

extension of protection of the international registration to additional Contracting

Parties.

Each Contracting Party designated in an international

application or subsequent designation will examine the request for extension of protection

as a national trademark application under its domestic laws.  Under Article 5 and

Regulations Rules 16 and 17, there are strict time limits (a maximum of 18 months) for the

trademark office of a Contracting Party to refuse a request for extension of protection.

If the Contracting Party does not notify the IB of a refusal within this time period, the

mark is automatically protected

n of protection

as a national trademark application under its domestic laws.  Under Article 5 and

Regulations Rules 16 and 17, there are strict time limits (a maximum of 18 months) for the

trademark office of a Contracting Party to refuse a request for extension of protection.

If the Contracting Party does not notify the IB of a refusal within this time period, the

mark is automatically protected.  However, in the United States, an extension of protection

may be invalidated in accordance with the same procedures as for invalidating a national

registration, e.g., by cancellation. See

TMEP §1904.07

for

information about invalidation.

The Madrid Protocol may apply to the USPTO in three ways:

Office of Origin

.  The USPTO is the Office of Origin if an

international application and/or registration is based on one or more applications

pending in or registrations issued by the USPTO. Article 2(2); Regs. Rule

1(xxvi).

Office of a Designated Contracting Party

.  The USPTO is the office

of a designated Contracting Party if the holder of an international registration

requests an extension of protection of that registration to the United States. Regs.

Rule 1(xvi), (xxv).

Office of the Contracting Party of the Holder

.  If the holder of

an international registration is a national of, is domiciled in, or has a real and

effective industrial or commercial establishment in the United States, the holder can

file certain requests with the IB through the USPTO, such as requests to record

changes of ownership (

see

TMEP

§1906.01(a)(i)

) and restrictions on the holder’s right to

dispose of an international registration (

see

TMEP

§1906.01(b))

.  The expression “Contracting Party of the

Holder” includes the “Office of Origin,” as well as any other Contracting Party in

which a holder is a national, is domiciled, or has a real and effective industrial or

commercial establishment.  Regs. Rule 1(xxvi

bis

).

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