Madrid Protocols Streamlines European Trademark Registration Process

Madrid Protocols Streamlines European Trademark Registration Process

by Beverly Rice, December 2009

Registering a trademark in multiple countries used to cost companies much time and a lot of money. Separate applications and fees were required for each nation in which a trademark registration was sought. Fortunately, the bureaucratic hurdles to trademark registration have been removed by governing bodies in the European Union (EU) and the World Intellectual Property Organization (WIPO).

Community Trademark

The European Union trademark law allows an EU member country to obtain a trademark that will be valid in all EU countries designated by the applicant nation. Trademarks may be registered under a national system, with individual countries, or across the entire EU by way of a Community Trademark (CTM).

The purpose of a Community Trademark is to streamline the application process and to achieve harmonization of trademark law within the EU. Administered by the Office for Harmonization in the Internal Market, the CTM saves companies time and money, is good for 10 years, and can be renewed indefinitely.

Having a national registration and a CTM registration system can cause confusion as requirements for each may differ. As more countries join the EU, there is greater chance of opposition to an application if new members feel a CTM application conflicts with their trademark rights. One member state's objection to a CTM application can doom the entire application. However, once an application is approved, it is enforceable in all EU countries.

The plusses clearly outweigh the minuses of having a CTM. In addition being a cost effective and time saving application process, a Community Trademark identifies the origin of goods and services; acts as a guarantee of product quality; and provides publicity and advertising benefits.

Earlier Worldwide System Ineffective

Before the CTM there was the Madrid System whose goal was also to streamline the trademark registration process among countries. The system was administered by the International Bureau of WIPO. However, the Madrid System never gained acceptance among enough countries to be effective. Nations who represented the bulk of trademark filings (U.S., Japan, U.K., along with several in Central and South America), failed to sign on to the system.

These countries feared that if a home registration (upon which the international registration is based) got canceled or limited, the international registration would face the same fate. Also, forwarding a uniform application to Madrid System members nations, rather than an actual registration of the applicable trademark in the national registers, precluded a true registration system.

A Protocol is Born

The Madrid Protocol was established to address the problems with the Madrid System. Like the EU's CMT, the Protocol enables countries to get a single trademark registration that will be valid in all member nations. The Protocol includes provisions for a fair and equitable formula under which countries can make decisions related to the implementation of the Protocol.

Another benefit of the Madrid Protocol is that a country can obtain an international registration based on a pending trademark application. Under the old Madrid System, a trademark owner had to hold an existing registration in a member jurisdiction before applying for an international one. This requirement added months or years to the processing time.

The Protocol also solves the problem of home registrations coming under attack from other member nations. Through a process called conversion, a challenged international registration can be transformed into a series of applications in each jurisdiction designated by the applicant.

These improvements satisfied most countries who balked at the Madrid System, including EU members and the United States, who reached an agreement to participate in the Protocol. Protocol participants are especially pleased with the cost savings from filing a single application. The cost to register one trademark in 10 separate countries is at least $14,000. Under the Protocol, the cost drops to a pre-set price of $4700 for one international application.

The cost to amend a trademark also drops considerably. A company with 1000 trademark registrations in ten countries used to spend several thousand dollars to file 10,000 amendment applications. With the Protocol, the company spends $100 to file one amendment application with WIPO.

Both the Community Trademark system and the Madrid Protocol allow EU member states to take advantage of huge cost savings and to speed the process of obtaining trademark registrations in multiple countries - a good example of bureaucracy that actually works.