Madrid Protocol
The Madrid Protocol, formally known as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, is an international treaty administered by the World Intellectual Property Organization (WIPO) that enables trademark owners to secure protection for their marks in multiple countries through a streamlined, single international application process.[1] Adopted on June 27, 1989, in Madrid, Spain, the Protocol entered into force on December 1, 1995, and currently has 115 contracting parties covering 131 countries, representing over 80% of world trade.[1][2][3] The primary purpose of the Madrid Protocol is to simplify and reduce the costs associated with obtaining and maintaining international trademark protection, allowing applicants to designate multiple territories in one filing rather than pursuing separate national registrations.[4] By centralizing the process through WIPO, the system facilitates easier management of trademarks, including renewals, modifications, and assignments, all handled via a single international registration that serves as the basis for protection in each designated country.[5] This approach is particularly beneficial for businesses expanding globally, as it minimizes administrative burdens and fees compared to individual country filings, while ensuring that local intellectual property offices retain the authority to examine and enforce the marks within their jurisdictions.[6] To use the Madrid Protocol, an applicant must first have a basic trademark application or registration in their home country (the "office of origin"), which then certifies the international application submitted to WIPO.[7] Once filed, WIPO examines the application for formal compliance, publishes it in the WIPO Gazette of International Marks, and forwards it to the designated countries' offices for substantive review, typically within 12 to 18 months.[4] Protection is granted or refused on a country-by-country basis, but the international registration remains valid for 10 years and can be renewed centrally, with the option to add or remove designations as needed.[4] The Madrid Protocol builds on the earlier Madrid Agreement of 1891, addressing limitations in the original treaty by offering greater flexibility, such as allowing non-members of the Agreement to join and basing international applications on pending rather than only registered national marks.[1] Together, the Agreement and Protocol form the Madrid System, which has evolved through amendments, including those in 2006 and 2007, to enhance efficiency and adapt to modern trademark practices like multi-class filings and transformation procedures for converting international registrations into national ones if needed.[1] As of 2025, the system continues to expand, supporting 915,034 active international registrations (as of 2024) and promoting harmonized trademark protection worldwide.[8]Introduction
Definition and Purpose
The Madrid Protocol, formally known as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, is an international treaty administered by the World Intellectual Property Organization (WIPO). Adopted on June 27, 1989, and entering into force on December 1, 1995, it establishes a centralized system for the international registration of trademarks, enabling applicants to seek protection in multiple jurisdictions through a single application filed via their domestic intellectual property office, known as the Office of Origin.[9][10] This mechanism forms the core of the Madrid System, which has superseded the earlier Madrid Agreement as the primary framework for such registrations since 2016. The primary purpose of the Madrid Protocol is to simplify and streamline the process of obtaining and managing trademark protection abroad for rights holders, thereby reducing administrative burdens, costs, and the complexities associated with filing separate applications in each target country. By allowing a unified procedure conducted in a single language and with standardized fees, the Protocol facilitates efficient global expansion for businesses and individuals, promoting international trade while maintaining the sovereignty of national examination processes.[11][10] In terms of scope, the Protocol applies to trademarks, service marks, collective marks, and certification marks, encompassing various forms such as three-dimensional, sound, and color marks. Protection under the system is inherently territorial, extending only to the designated Contracting Parties (member jurisdictions) selected in the application, and is equivalent in scope and effect to that obtained through direct national or regional filings in those territories. The foundational principle of the Protocol—"one application, one registration, multiple protections"—underpins its operation, whereby a single international registration serves as the basis for protections in multiple countries, subject to a five-year dependency period on the underlying basic mark before achieving independence.[9][10]Legal Framework
The Madrid Protocol, formally known as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, was adopted on June 27, 1989, in Madrid, Spain.[9] It entered into force on December 1, 1995, initially for the countries that had deposited their instruments of ratification or accession by the required date, with subsequent accessions following three months after notification by the Director General of the World Intellectual Property Organization (WIPO).[12] Membership in the Protocol is restricted to states that are already parties to the Paris Convention for the Protection of Industrial Property, ensuring a foundational alignment with international industrial property standards.[9] The Protocol's core provisions are outlined in its 14 articles, which establish the legal basis for international trademark registration. Article 1 defines membership in the Madrid Union, while Article 2 specifies that protection is secured through international registration by the International Bureau of WIPO. Article 3 details the requirements for filing an international application, including the need for a basic national or regional application or registration in a contracting party. Article 6 provides for an initial registration duration of 10 years, renewable indefinitely for successive 10-year periods upon payment of renewal fees. Article 4bis addresses the replacement of a national or regional registration with the international registration after five years, allowing the international registration to become independent from the basic mark. These provisions collectively facilitate a streamlined system for multi-jurisdictional protection while maintaining ties to origin-based rights during the initial period.[9] The Protocol has undergone amendments to refine its operational aspects. In 2006, amendments focused on fees and procedures, including clarifications on mark representations and reductions in fees for applicants from least developed countries to enhance accessibility.[12] Further updates in 2019, effective through revisions to the accompanying regulations, addressed irregular designations, allowing for the correction of deficiencies in subsequent designations within specified time frames to prevent abandonment.[13] More recent changes in 2025 include amendments allowing partial replacement of national registrations by international ones (effective July 2025 in the US) and a new email requirement for users (effective November 2025).[14][15] The Protocol operates within WIPO's broader framework, governed by the Common Regulations under the Madrid Agreement and Protocol, which detail procedural rules for applications, examinations, and maintenance.[16] These regulations ensure uniform implementation across contracting parties, with the International Bureau serving as the central authority for registrations and notifications.[17]Historical Development
Origins and Madrid Agreement
The international framework for the protection of industrial property, including trademarks, originated with the Paris Convention for the Protection of Industrial Property, signed on March 20, 1883, in Paris, France. This treaty laid the groundwork by establishing core principles such as national treatment, which mandates that member countries accord foreign applicants the same protections as their own nationals, and the right of priority, enabling an applicant to secure the filing date of an initial application in one member country for subsequent filings in others within six months. These provisions addressed the growing need for reciprocal protections amid 19th-century industrialization and cross-border trade, initially uniting 11 countries including France, Belgium, and the United Kingdom. Building upon the Paris Convention, the Madrid Agreement Concerning the International Registration of Marks was signed on April 14, 1891, during diplomatic conferences in Madrid, Spain, representing the first multilateral treaty dedicated to streamlining international trademark registration. Administered by the International Bureau—established as part of the Paris Union and later evolving into the World Intellectual Property Organization (WIPO)—the Agreement enabled centralized filing, allowing trademark owners from contracting parties to submit a single application through their national intellectual property office for protection in multiple designated countries. Key provisions included the International Bureau's role in recording and publishing registrations, with effects equivalent to national filings in each designated territory; however, it enforced strict uniformity, requiring the mark to be identical in form, language, and scope across all countries, and mandating the use of the Nice Classification system from the applicant's country of origin.[18] Despite its pioneering approach, the Madrid Agreement suffered from notable limitations that curtailed its effectiveness and appeal. It demanded absolute uniformity in marks and goods/services lists, which conflicted with diverse national laws, and relied on the origin country's classification without flexibility for local adaptations, often complicating examinations in jurisdictions with different systems. Additionally, the Agreement provided limited provisions for oppositions, offering only a short notification period for refusals without accommodating extended review processes common in many countries, and tied international registrations tightly to the home application for up to seven years, exposing them to "central attacks" if the base registration failed. These rigidities resulted in slow growth, with only 29 contracting parties by 1986, predominantly European nations and excluding major economies like the United States, Japan, and the United Kingdom.[19] The Agreement's inflexibility became increasingly problematic in the 1970s and 1980s amid accelerating globalization, rising international trade, and demands for more adaptable intellectual property mechanisms. Growing dissatisfaction among users and governments—exacerbated by the failure of reform attempts like the 1973 Trademark Registration Treaty, which entered into force in 1980 but attracted just five parties—highlighted the need for a system that could accommodate varying national procedures, longer examination periods, and broader participation without compromising core efficiencies. This momentum for modernization ultimately led to the negotiation of the Madrid Protocol as a complementary instrument to overcome these barriers.[19]Creation and Entry into Force
The Madrid Protocol was negotiated and adopted during a diplomatic conference held in Madrid, Spain, from June 19 to 27, 1989, under the auspices of the World Intellectual Property Organization (WIPO) to remedy the perceived shortcomings of the 1891 Madrid Agreement, particularly its rigidity in application requirements and examination procedures.[10][20] The conference addressed concerns that the Agreement's strict dependence on the home registration and limited flexibility deterred participation from major trading nations, leading to the Protocol's design as a more adaptable complement rather than a replacement.[21] Key innovations in the Protocol included greater flexibility by allowing international applications to be based on a pending home application rather than solely a registered mark, permitting some variations in the mark's representation across jurisdictions, extending the refusal notification period to 18 months (with possible extensions for oppositions), and establishing a five-year "dependence period" after which the international registration becomes independent of the home mark's status.[21][22] These changes aimed to align the system more closely with diverse national trademark laws while preserving the core principle of centralized filing through WIPO's International Bureau.[23] The Protocol entered into force on December 1, 1995, initially for four contracting parties: China, Spain, Sweden, and the United Kingdom, marking the operational start of the expanded Madrid System on April 1, 1996.[10][22] By 2025, membership had grown to 115 contracting parties covering 131 countries, reflecting widespread adoption.[24] Significant milestones included the United States' accession, effective November 2, 2003, which integrated one of the world's largest markets; the European Union's entry on October 1, 2004, extending coverage to its 27 member states; Mauritius's accession effective May 6, 2023; and Qatar's joining on May 3, 2024, among other recent expansions that enhanced the system's global reach.[25][26][27][28]Membership and Administration
Contracting Parties
The Madrid Protocol currently has 116 contracting parties as of November 2025, collectively covering 132 countries and territories and representing over 80% of global trade.[29] These parties enable trademark owners to seek protection through a single international application managed by the World Intellectual Property Organization (WIPO). Contracting parties are categorized into individual countries and intergovernmental organizations. Individual countries include major economies such as the United States (accession effective November 2, 2003), China (effective December 1, 1995), and Japan (effective March 14, 2000), among others like Australia, India, and the United Kingdom. Intergovernmental organizations encompass entities like the European Union (effective December 1, 2003, covering 27 member states), the African Intellectual Property Organization (OAPI, effective February 9, 2015, covering 17 African countries), and the Benelux Office for Intellectual Property (effective October 1, 2005, covering Belgium, Netherlands, and Luxembourg). The system's territorial coverage extends beyond sovereign states to include certain overseas territories and dependent areas. For instance, protection can be sought in Hong Kong (China) separately from mainland China since July 1, 1997, and in Puerto Rico as part of the United States' designation. Other examples include the Faroe Islands (Denmark) and Greenland (Denmark, with specific declarations). Recent expansions have strengthened the Protocol's global reach. Qatar acceded in 2024 (effective August 3, 2024), while Ethiopia joined as the latest member in 2025 (effective August 15, 2025), marking its entry into key international IP frameworks.[29] Despite this growth, notable non-members include major economies such as Brazil and Canada, which continue to rely on national or regional filing systems. Accession to the Protocol requires that a state or intergovernmental organization first be a member of the Paris Convention for the Protection of Industrial Property. Upon ratification or accession, parties deposit an instrument with WIPO and may make optional declarations on matters such as opposition periods (typically 12 months, extendable to 18), whether to charge individual designation fees, and procedures for handling refusals.Role of WIPO
The World Intellectual Property Organization (WIPO), serving as the International Bureau, administers the Madrid System under the Madrid Protocol, acting as the central authority for managing international trademark registrations.[24] It receives international applications filed through offices of origin, examines them for formal compliance, forwards them to designated contracting parties, and maintains the International Register, which serves as the official record of all registrations.[10] WIPO publishes details of applications, registrations, and subsequent actions in the WIPO Gazette of International Trademarks and ensures notifications are sent to relevant parties.[10] Among its key responsibilities, WIPO issues certificates of international registration to applicants, effective from the filing date and valid for 10 years, renewable thereafter.[10] It records changes such as renewals, assignments of ownership, limitations to goods or services, and cancellations, notifying designated offices and updating the International Register accordingly.[10] Additionally, WIPO provides public search tools, including the Madrid Monitor database, which allows users to track the status of international registrations and monitor potential conflicts.[24] WIPO manages the fee structure for the system, collecting payments in Swiss francs to cover administrative costs. The basic fee is 653 Swiss francs for black-and-white marks (or 903 for color marks), with complementary fees of 100 Swiss francs per additional class beyond the third, and individual designation fees varying by contracting party (for example, 789 Swiss francs for the first class in the European Union).[30][31] Reductions, such as 90% for applicants from least-developed countries, are applied to promote accessibility.[24] In terms of support services, WIPO offers legal advice and technical assistance to users and national intellectual property offices, including training programs, webinars, and guidelines on system procedures.[24] It facilitates dispute resolution by recording and notifying refusals or oppositions from designated offices but does not adjudicate disputes itself.[10] Recent digital enhancements include the mandatory use of electronic communication for notifications since 2021 and the eMadrid platform for online filing and management of applications, introduced to streamline processes.[32][24]Operational Mechanism
Application and Filing Procedure
The application for international registration under the Madrid Protocol must be initiated through the applicant's Office of Origin, which is the intellectual property office of a Contracting Party to the Protocol where the applicant has a real and effective industrial or commercial establishment, domicile, or nationality.[10] This Office of Origin must already hold a basic mark in the form of a national or regional application or registration on which the international application is based.[10] Direct filing with the World Intellectual Property Organization (WIPO) is not permitted; instead, the applicant submits the request to the Office of Origin, which certifies its compliance with the basic mark and forwards it to WIPO's International Bureau within two months of receipt.[33] The filing date is the date of receipt by the Office of Origin, provided it is transmitted timely to WIPO.[10] The application requires specific elements to be complete, primarily submitted using Form MM2, the official request form available in English, French, or Spanish.[10] These include a clear reproduction of the mark—such as a visual image in JPEG, PNG, or TIFF format (up to 20x20 cm), or audio/video files for non-traditional marks—along with a list of goods and services classified according to the Nice Classification system, which must not exceed the scope of the basic mark, a valid email address for the applicant/holder and any representative,[34] and designation of at least one Contracting Party (other than the origin) where protection is sought.[10] Applicants must also pay the requisite fees in Swiss francs to WIPO, covering a basic fee (CHF 653 for black-and-white marks or CHF 903 for color marks), complementary fees (CHF 100 per designated country without an individual fee), and any supplementary fees for classes beyond three (CHF 100 each).[10] Fees can be paid directly by the applicant or through the Office of Origin, and tools like WIPO's Madrid Goods and Services Manager assist in preparing compliant lists.[10] Upon receipt, WIPO's International Bureau conducts a formal examination to verify completeness and compliance, notifying any irregularities (such as classification errors) with a three-month period for correction.[33] If compliant, the International Bureau records the mark in the International Register, forwards copies of the application to the designated Offices within two months, and publishes the international registration in the WIPO Gazette of International Marks, which is accessible via the Madrid Monitor database.[10] WIPO then issues a registration certificate to the holder, establishing the international registration effective from the filing date.[33] This central recording function by WIPO simplifies management for holders and Offices.[10] The typical timeline for registration at WIPO is three to five months from filing, assuming no irregularities arise, with the initial term of protection lasting ten years from the registration date and renewable thereafter.[10] For expansions, subsequent designations can be added later using Form MM4, submitted through the Office of Origin or directly to WIPO, following a similar certification and forwarding process with applicable fees.[10] If the basic mark lapses within the first five years of dependency, the holder may transform the international registration into separate national or regional applications in the designated territories, retaining the original filing date, provided a request is filed within three months of the lapse using appropriate forms like MM16 for EU designations.[10]Examination and Refusal Process
Upon receipt of an international application under the Madrid Protocol, the International Bureau of the World Intellectual Property Organization (WIPO) conducts a formal examination to verify compliance with procedural requirements, such as classification of goods and services according to the Nice Agreement, indication of goods and services, and entitlement to file.[10] If irregularities are identified—such as vague descriptions of goods or services, missing registration numbers, or classification errors—WIPO notifies the applicant or office of origin, providing a three-month period to remedy them; failure to do so may result in partial or total abandonment of the application, though partial fee refunds are possible in certain cases.[10] Once formalities are satisfied, WIPO registers the mark, publishes it in the WIPO Gazette of International Marks, and notifies the designated contracting parties, initiating the substantive examination phase by their intellectual property offices.[10] Each designated office examines the international registration for absolute grounds (e.g., lack of distinctiveness, descriptiveness, or public policy violations) and relative grounds (e.g., conflicts with prior rights or likelihood of confusion), applying its national trademark laws as if the application were filed directly. The office has up to 12 months from the date of WIPO's notification to issue a provisional refusal, though many contracting parties have declared an extension to 18 months under Article 5(2)(c) of the Protocol; for refusals based on oppositions, further extensions beyond 18 months may apply if declared by the member.[10] Provisional refusals can be total, affecting all goods and services, or partial, affecting only specified classes or items, and must be notified to WIPO using standardized forms (e.g., Form MM3), detailing the grounds and scope.[10] WIPO records these refusals in the International Register and promptly informs the holder or representative, who then has a minimum response period of two months to address the refusal directly with the designated office, potentially through arguments, amendments, or oppositions.[10] Oppositions by third parties are handled exclusively under the designated office's national procedures, with any resulting refusals notified to WIPO within the applicable timeline.[10] If no provisional refusal is notified within the prescribed period, or if a refusal is withdrawn following the holder's response, protection is granted automatically, conferring the same rights and remedies as a national registration in that territory, recorded by WIPO under Rule 18ter of the Common Regulations. Designated offices may also issue statements of grant of protection, either total or partial, to confirm the scope.[10] The international registration remains dependent on the basic mark in the office of origin for the first five years from the date of registration, meaning that any cancellation, expiration, or invalidation of the basic mark within this period automatically affects the international registration in all designated territories, unless the holder requests transformation into separate national applications within three months. After this dependence period, the international registration becomes independent and is no longer tied to the basic mark's status.[10]| Aspect | Default Timeline | Possible Extension | Source |
|---|---|---|---|
| Provisional Refusal Notification | 12 months from WIPO notice | 18 months (per member declaration) | Article 5(2), Madrid Protocol |
| Response to Refusal | Minimum 2 months | Varies by designated office | Rule 16, Common Regulations (as amended 2023)[10] |
| Opposition-Based Refusal | Within 12/18 months | Beyond 18 months (if declared) | Rule 16bis, Common Regulations[10] |
| Dependence on Basic Mark | 5 years from registration date | N/A | Article 6(2)-(4), Madrid Protocol |