The Madrid Protocol is a protocol signed by more than 100 countries around the world. Its purpose is to make the registration process of Trademarks more efficient and accessible, internationally.
As will be explained in detail in this article, the Protocol allows the owner of a registered Trademark (or at the very least, the owner of a Trademark application) to submit, in a relatively simple procedure, an application for registration of the mark in each of the countries that are Parties to the Protocol, in a centralized manner and without the requirement to conduct a specific application to each country.
The aforesaid has many advantages, but there are also some drawbacks, as will be explained below.
Until the signing of the Madrid Protocol in 1989 and the establishment of the International Registry under the Protocol, any person interested in registering a Trademark owned by him in a foreign country, would have to conduct himself separate registration procedures, i.e., he had to submit a separate application in each of the countries in which he requested to register the Trademark. Needless to say, this procedure caused significant complications, both in terms of timetables and in light of the fact that the registration laws in each country were different and demanded different preparation by the applicant.
However, after the signing of the Madrid Protocol, the manner in which an international application for registration of a Trademark was made, became significantly easier, as all that was required was for the applicant to have a registered Trademark (or at least an open application for the registration of the mark) in one of the countries which signed the Protocol. Upon fulfillment of this threshold, the applicant must submit an application for the international registration of the mark, directly to WIPO – World Intellectual Property Organization (located in Switzerland), through which the registration will be automatically submitted to each of the countries that are members of the Protocol.
In practice, WIPO examines the application for international registration of the Trademark in a technical manner only. Insofar as the technical examination succeeds, an international application number will be issued and the mark shall be transferred for registration in each requested country. At this stage, each country shall independently carry out both a technical examination and a substantive examination of the application for registration. After an examination as aforementioned, each country may, within 18 months, decide whether to reject or accept the request.
Madrid Protocol in view of the laws of Israel:
Although the Madrid Protocol was signed in 1989, Israel joined the protocol only in 2010.
Following Israel’s accession to the Protocol, Amendment No. 5 to the Trademarks Ordinance, 2003, was enacted, which applied the provisions of the Protocol to the procedures for registration of Trademarks in Israel. According to the Amendment, any person who has a Trademark registered in his name or who submitted an application for the registration of a Trademark may submit an application for international registration.
The Amendment also expanded and added that there is a dependency between the registration of the international Trademark and its domestic registration, which is expressed in the fact that if the mark is deleted for any reason in the country of origin in which it was registered (in this case, Israel), during the five years following the submission of the international application, then all the marks registered in foreign countries by virtue of the Protocol shall also be deleted. This dependency is considered by many to be a disadvantage of the Protocol, as will be explained below.
Advantages and Disadvantages of the Madrid Protocol:
It is clear that the main advantage of the Madrid Protocol is the increased efficiency in filing an international registration application, in that there is no longer a need to apply individually to each country in which registration is requested, but one request can be made directly to WIPO, which will include all the countries requested by the applicant. Submitting a request in this manner significantly reduces the costs associated with international registration of Trademarks. This benefit also applies when a registered international mark holder wishes to renew his or her registration, as the renewal is also affected by submitting one consolidated application to WIPO.
Another advantage is the easy interface of database that WIPO offers, through which registered Trademarks (or submitted applications) can be searched centrally in all countries that are parties to the Protocol. Thus, it is no longer necessary to locate the Trademark database of each specific country in order to check whether registration of a particular mark in this country is possible, but rather, the search through WIPO has already consolidated all the results from all the party countries. This means significant savings in resources and time.
On the other hand, there are also some disadvantages to the Protocol. The most important disadvantage is the dependency mentioned above between the international registration and the domestic registration, during the first five years after the submission of the application. Thus, if the applicant is a person who possesses only an application for the registration of the Trademark in Israel (and not a registered Trademark), then if the Registrar of Trademarks will reject his application for registration in Israel or will grant it a relatively limited protection, then the international application will also be rejected or limited, same as in Israel.
Another disadvantage is when the owner of a registered international Trademark wishes to transfer the rights to the Trademark to a third party whose place of residence/incorporation is in a country that is not a party to the Protocol. In such a situation, there will be a problem with the transfer of the mark.
In addition, we will mention another small disadvantage: the international application must be identical to the original domestic application submitted, so it is impossible to amend and/or change the application between countries. The application, as submitted in the country of origin, shall be identical in all other countries where registration is requested.
While there are disadvantages to the Madrid Protocol, the advantages inherent in it are much greater. The efficiency and savings in resources (both economically and otherwise) greatly facilitate the process of international registration of Trademarks, in a way that justifies Israel’s participation in the Protocol. After all, the scope of protection of the Trademark can sometimes decide the fate of the mark and the person/company holding it.