Using international trade mark registrations through the
Madrid Protocol to promote your business around the
It became easier for brand owners to achieve global trade mark
protection for their brands when Australia became a party to the
Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks (the Madrid Protocol) in 2001.
Since then, Australian trade mark owners have enjoyed the benefits
associated with simplified filings of trade mark applications in
overseas countries that are signatories to the Madrid Protocol.
The Madrid Protocol enables trade mark owners, who are resident
in a country that is a party to the Protocol, to obtain
international protection for their marks by filing a single trade
mark application in their home country. To this end, a trade mark
application may be filed with the Australian Trade Marks Office
and, if accepted for registration in the designated countries, is
afforded equal treatment in every country in which it is
registered. Today, more than 80 countries are signatory to the
More countries join the Madrid Protocol
Additional countries consistently continue to join the Protocol
which means that trade mark owners can extend their Madrid Protocol
trade mark registrations across the world. So far in 2013, India,
Mexico and, most recently, Rwanda, have become a party to the
Protocol. New Zealand joined the Madrid Protocol last year.
It is important to note that India's membership is unique,
in that it is conditional on allowing India a greater time to
adhere to certain notice requirements and permitting the country to
receive an additional fee for Indian registrations. Most
significantly, India's membership prevents international
registrations filed prior to India's accession to the Madrid
Protocol from subsequently achieving registration in India. While
Madrid Protocol trade mark applications filed after 8 July 2013 may
designate India through the Madrid Protocol, owners of pre 8 July
2013 Madrid Protocol trade mark applications will still need to
file applications for their trade marks directly into India.
India shares this quirk with Turkey and the Philippines, who,
among other countries, continue to disallow the subsequent
designation of trade marks where the mark was registered prior to
the country becoming a party to the Madrid Protocol.
The expansion of the Madrid Protocol has also been a prominent
focus in Latin America, where, over the past few years, a number of
prominent Latin American countries have considered joining the
Madrid Protocol. Through policy seminars, local government efforts,
and the signing of trade agreements, Latin American countries are
being encouraged to embrace the international system. In April
2013, Brazil's accession to the Madrid Protocol was approved by
the Brazilian Chamber of Foreign Trade, to be introduced to
national congress for consideration. Brazil may be one of the next
countries to join the Madrid Protocol.
What does this mean to you?
Some trade mark owners are unaware that, through the Madrid
Protocol, they are able to continue to designate additional
countries as part of their registration. Importantly, a trade mark
owner may be able to extend their international registration to
designate a country that has become a party to the Madrid Protocol
after the initial registration of their mark.
If you have an existing Madrid Protocol trade mark registration,
then it may be time to review it and consider whether you should
extend your registration to include any further countries that are
now party to the Madrid Protocol.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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