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The Madrid System for the International Registration of Marks Silvia Vincenti, WIPO Ankara, April 2008. Madrid System. Part I. Overview of the Madrid System and its Procedures Part II Managing an International Registration Latest and Future Developments of the Madrid System.

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The Madrid System for the

International Registration of Marks

Silvia Vincenti, WIPO

Ankara, April 2008


Madrid System

Part I

  • Overview of the Madrid System and its Procedures

Part II

  • Managing an International Registration
  • Latest and Future Developments of the Madrid System

Madrid System

The Madrid System: Objectives

facilitating trademark protection in export markets

through a simple, expeditious and cost-effective procedure for

  • the central filing of applications
  • the central management of registrations

Madrid System

Direct filing route / Madrid route


Madrid System

Quick comparison

vsInternational Route

 • oneprocedure

 • onelanguage

 • fees paid in only one currency (CHF)

 • renewal/changes:a singleoperation

• local agent not required (unless there is a refusal)

Direct Filing

•different procedures

• different languages

• fees paid in differentlocal currencies

• renewal/changes:several operations

• (usually) through a local agent


Madrid System

Legal Framework

Madrid Agreement (1891)latest revised in 1967

Madrid Protocol (1989)

last revised in 2007, with effect from Sept. 1, 2008

Common Regulationslast revised in 2007, with effect from Sept. 1, 2008

Administrative Instructionslast revised in 2007, with effect from Sept. 1, 2008

Law and Regulations of Each Contracting Party


Madrid System

The Madrid Protocolthe need for a more flexible approach

The Madrid Protocol - 1989

- adopted - June 28, 1989

- came into force - December 1, 1995

- began operations - April 1, 1996

- last revised – September 2007, with effect

from Sept. 1, 2008


basic right

refusal period

fee system




Madrid System

The Madrid Protocolthe need for a more flexible approach on


Madrid System



Members States States/Organizations

Basic right basic registration basic registration/ application

Entitlement cascade no cascade

Languages French English, French, Spanish

Fees supplementary and or individual fee option


Refusal 12 months or 18 months or 18+

months (opposition)


Dependency 5 years5 years with possible transformation

protection is governed by domestic law

Madrid System

Protection is Governed by Domestic Law

The Madrid system of international registration of marks is purely procedural.It does not determine:

- the conditions for protecting a mark

- the rights which result from protection

These are determined by the national law of the

designated Contracting Parties


Madrid System

Madrid Union Members (82)on April 1, 2008

Madrid Protocol - 75Madrid Agreement - 56

madrid union 82 members on april 1 2008

Madrid System

(Including EC)

Agreement only 7Protocol only 26Agreement and Protocol 49

Madrid Union - 82 Memberson April 1, 2008
members of the madrid union 82
Agreement (7)


Bosnia and Herzegovina






Protocol (26)

Antigua and Barbuda






European Community











Republic of Korea



Madrid System

Members of the Madrid Union (82)



United Kingdom

United States of America



Agreement and Protocol (49)













Czech Republic

Democratic People’s

Republic of Korea




Iran (Islamic Republic of)



















Russian Federation

San Marino


Sierra Leone






Syrian Arab Republic

The former Yugoslav Republic of



Viet Nam

who can use the madrid system

Madrid System

Who can use the Madrid system?

Any natural person or legal entity who has:

  • a connection to a Contracting Party

- establishment

- domicile

- nationality

(closed system)

  • a basic applicationor a basic registration in that Contracting Party
who can use the system cont

Madrid System

Who can use the system (cont.)?

If the Contracting Party is a Contracting Organization:

  • Establishment or domicile in the territory of an intergovernmental organization that is pary to the Madrid Protocol, or nationality of a Member State of that organization
  • Member State in question does not need to be party to the Madrid Agreement or Madrid Protocol (Ex.: Malta - EC)
the registration procedure

basic registrationbasic application

Madrid System

The registration procedure



Office of Origin

International Bureau

Offices of the Designated Contracting Parties

the international application contents

Madrid System

The international application(contents)
  • Office of origin
  • applicant’s data
  • entitlement to file
  • basic application or basic registration data
  • reproduction of the mark
  • list of goods and services
  • designated Contracting Parties
  • other indications

Madrid System

Which Contracting Parties can be designated?

  • Any Contracting Party which is bound by the same treaty as the treaty of the Contracting Party of origin
  • Only Contracting Parties to the Madrid System can be designated

Madrid System

Which CP can be



Kazakhstan (A)



EC (P)

Turkey (P)


China (AP)


Madrid System

Which CP can be












Madrid System

Three types of international application

Governed exclusively by the Agreement

- all designations under the Agreement

Governed exclusively by the Protocol

- all designations under the Protocol

Goeverned by both the Agreement and the Protocol

- designations under the Agreement

- designations under the Protocol

three types of international application consequences

Madrid System

Three types of international applicationconsequences

• Agreementonly: – form MM1

– French

– basic registration

– cascade

• Protocolonly: –formMM2

– English, French or Spanish

– basic application or registration

– no cascade

• Agreement + Protocol:– form MM3

– English, French or Spanish

– basic registration

– cascade

office of origin tasks


Madrid System

Office of Origintasks

certifies certain facts concerning the relationship between the international application and the basic application or registration (e.g., same applicant, same mark)

Office of Origin

The international application cannot be filed directly with the International Bureau of WIPO

international bureau tasks

formality examination

inscription in the International Register

publication in the WIPO Gazette

notification to designated Contracting Parties

notification of the certificate of international registration to the holder


Madrid System

International Bureautasks
designated contracting party tasks

Madrid System

Designated Contracting Partytasks

Office of the Designated

Contracting Party

substantive examination opposition

12/18+ months



no provisional refusal/withdrawn

= national registration

the refusal procedure

Madrid System

The refusal procedure

Notification of the international registration by the IB

to the designated Office (Date!)



by des. Office

12 months

18 months

18+ months

Notification of PROVISIONAL REFUSAL to the IB

(objection, opposition...)

Response by holder

Refusal procedure before the competent authority

(in some cases appeal possible)

National phase

Notification of FINAL DECISION to the IB



confirms partially

the provisional refusal


Madrid System

Length of the Refusal Perioddeclarations made under the Protocol

  • Extension of refusal period to 18 monthsAM, AU, BY, BG, CN, CY, DK, EE, EM, FI, GE, GR, IS, IR, IE, IT, JP, KE, LT, NO, PO, KR, SM, SG, SK, SE, CH, TR, TM, UA, GB, US, UZ (33)
  • Possible notification of refusals based on an opposition after 18 monthsAU, CN, CY, DK, EE, FI, GR, IR, IE, IT, KE, LT, NO, KR, SG, SE, TR, UA, GB, US (20)
statement of grant of protection sgp rule 17 6

Madrid System

Statement of grant of protection (SGP)(Rule 17(6))
  • Under the Madrid System, if no provisional refusal is notified to the IB within the applicable time limit, protection is automatically granted in the designated Contracting Party concerned. The holder of the IR must wait until the expiry of the refusal period to know if protection is granted.
  • However, if no notification of total refusal is notified, the Office of a CP may elect to send a SGP to the IB after:

a) all the refusal procedures are completed (protection


b) (i) ex officio exam is completed

(ii) after expiry of opposition period (protection



Madrid System

SGPs under Rule 17(6) are issued by the following Contracting Parties (April 2008)

Australia Japan

United Kingdom Hungary

Georgia Norway

Turkey Republic of Korea

Ireland Singapore

European Community Armenia

Benelux Syria


Madrid System

Effects of the international registration(Article 4)

  • national application as from the date of the int. registration until the expiry of the time limit to issue a refusal
  • national registration as from the date of the int. registration once the time limit to issue a refusal has expired (in the absence of a refusal or if the refusal is withdrawn
date of the international registration

Madrid System

Date of the international registration

date of reception by OO date of reception by the IB

2 months

date of the international registration

date of reception by the IB

date of reception by OO

2 months

date of int. registration

dependency on the basic national mark 5 years

Madrid System

Dependency on the basic national mark (5 years)

After expiration of 5 years

No effects, international registration becomes indipendent

Before expiration of 5 years

International registration still depends on the national basic mark: risk of “central attack”, ceasing of effects


NO (Agreement)

YES (Protocol)


Madrid System

Dependency – Ceasing of effects

  • Ceasing of effect if basic mark ceases to have effect in whole or in part within 5 years of date of IR, Office of Origin notifies IB and requests partial or total cancellation of IR
  • Cancellation due to a ceasing of effect

the IB cancels the IR to the extent requested by Office of Origin. The IB notifies all designated Contracting Parties of partial or total cancellation of IR. Records and publishes.


Madrid System

Transformation(Protocol Article 9quinquies)

  • When? cancellation (partial or total) of and IR due to a ceasing effect triggers a right to file a national or regional application in each designated CP
  • Request

Request for transformation must be filed directly with office(s) of the designated CP(s) within three months from the date of cancellation in the international register

  • Rights preserved- date of international registration becomes filing date

- priority date, if any, claimed in international



Madrid System

  • Invalidation of effects of the international registration in a designated Contracting Party
  • Holder of international registration affected must be afforded the opportunity to defend his rights
  • Notification by the Office of the designated Contracting Party to the IB after invalidation is pronounced and is no longer subject to appeal

Madrid System

Fees Schedule(in Swiss Francs)

International Application

  • basic fee 653 or 903
  • supplementary (per class >3classes) 73* (100)
  • complementary (per DCP) 73* (100)

* can be replaced by individual fee under the Protocol

Subsequent Designation

  • basic fee 300
  • complementary (per DCP) 73*(100)

Madrid System

Fees Schedule (cont.)(in Swiss Francs)


  • basic fee 653
  • supplementary 73* (100)
  • complementary 73* (100)

* can be replaced by individual fee under the Protocol

Recording of transfer, limitation 177

Change of name/address 150

Recording of license 177


Madrid System

Individual FeesDeclarations made under the Protocol

Armenia, Australia, Bahrain, Belarus, Benelux, Bulgaria, China, Cuba, Denmark, Estonia, European Community, Finland, Georgia, Greece, Iceland, Ireland, Italy, Japan, Kyrgyzstan, Moldova, Netherlands Antilles, Norway, Republic of Korea, San Marino, Singapore, Sweden, Switzerland, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam (34)

part ii

Madrid System

Part II

Managing an International Registration

Interface with the Community Trademark System

Recent Developments in the Madrid System

centralized management

Madrid System

Centralized management
  • Subsequent designations
  • Renewal
  • Modifications (recording in the Int. Register):

- change in ownership

- change of name and address

- limitation

- renunciation

- cancellation

- recording of licences

- restrictions of holder rights

why a subsequent designation

Madrid System

Why a subsequent designation?
  • Subsequent designation made in respect of an international registration in order to extend protection to further CPs
  • When grounds of refusal, invalidation or others, which impeded the grant of protection in a Contracting Party, no longer exist
which cps can be designated

Madrid System

Which CPs can be designated?

Any CP which is bound by the same treaty as the treaty by which is bound the CP of the holder

Germany (AP)

Japan (P)

Turkey (P)

Egypt (A)

when a subsequent designation is not possible

Madrid System

When a subsequent designation is not possible?
  • Declaration under Article 14 (5) Protocol
    • Estonia (November 18, 1998)
    • Turkey (January 1, 1999)
    • Namibia (June 30, 2004)
how to make a subsequent designation

Madrid System

How to make a subsequent designation?
  • Form MM4
  • Through the Turkish Office or

directly to the International Bureau

  • Fee: 300 CHF + Designation fee(complementary or individual)
  • Subsequent designation may relate to one I.R. only
  • Narrower list of G&S possible, but not broader
date and duration of the subsequent designation

Madrid System

Date and duration of the Subsequent Designation
  • Presentation by holder directly to the IB
    • date of receipt by IB
  • Presentation by Office
    • date of receipt by Office if received by IB within

2 months

  • But holder may request that the sub. des. takes
    • effect after renewal
    • effect after recording of a change

Duration.Until the expiry of the international registration.

The subsequent designation does not have a duration of its


when can a change in ownership be recorded in the international register

Madrid System

When can a changein ownership be recorded inthe International Register?
  • new owner is entitled to use the Madrid system, i.e. he has a connection with a CP
  • entitlement of the new owner is considered in respect of each CP designated in the I.R.
who can be recorded as new holder

Madrid System

Who can be recorded as new holder?



CP of the transferor

CP of the transferee



Germany (AP)

Turkey (P)


Egypt (A)

China (AP)

types of change in ownership

Madrid System

Types of change in ownership

All goods/services


All designated CP’s

Some goods/services


Some designated CP’s

presentation of a request to record a change in ownership form mm5

Madrid System

Presentation of a request to record a Change in Ownership(Form MM5)
  • directly to the IB
  • through an Office
  • by the recorded holder:(the transferor)

Office of holder’s CP

Office of new holder’s CP

Office of holder’s CP

  • by the new holder:(the transferee)
  • through an Office

Office of new holder’s CP


Limitation, Cancellation, Renunciation

Madrid System

goods/servicesdesignated CPs


Limitation some

MM6 form all


Cancellation all

MM8 form all

Renunciation all some

MM7 form


no protection for the subsequent designation

goods/services is possible


goods/services remain goods/services taken into

kept in the International account for calculating

Register renewal fees

no protection for the no subsequent designation

goods/services in respect of those goods/services


Cancellation goods/services are goods/services are not taken

removed from the into account for calculating

International Register renewal fees

Renunciation no protection in the subsequent designation

Contracting Party of the Contracting Party

is possible

other modifications

Madrid System

Other modifications
  • Recording of change of name and address


  • Recording of a restriction of holder’s right of disposal (MM19)
  • Recording of licences (but not sub-licences) (MM13, MM14, MM15)

But see declarations made by some Contracting Parties

renewal overview

Madrid System

Renewal - Overview
  • Unofficial notice of expiry, 6 months before expiry of

10 year period

  • Payment of fees
    • directly with the International Bureau
  • Fees are due

at the date of expiry

    • grace period of 6 months (+ 50% of basic fee)

It is advisable to use form MM11 (optional)

Since 2006, Electronic Renewal is available on

web page

renewal prohibition of changes

Madrid System

Renewal - Prohibition of Changes
  • Principle: international registration is to be

renewed as recorded

  • No changes in the framework of renewal
    • name or address
    • goods or services
    • subsequent designation
  • Exception: renewal may be limited to some

designated Contracting Parties

separate request

representation before the international bureau rule 3 1

Madrid System

Representation before the International BureauRule 3(1)

Who may be appointed representative?

  • As from April 2007:

Any persons, without restrictions (geographical or professional).

New Rule 3(1)

interface with the community trade mark
Interface with the

Community Trade Mark


Madrid System

The Madrid / CTM Interface - 1

The EC acceded to Madrid Protocol with effect from October 1, 2004.


  • A Madrid international application may be filed using a CTM as the ‘basic’ mark
  • The EC may be designated in a Madrid application (covering all 27 countries in a single designation

= CTM, unitary right)


Madrid System

Madrid and the CTM – 2 Three features

  • Indication of a second language before OHIM in the international application (MM2) or subsequent designation form (MM4), for opposition, revocation, invalidity proceedings before OHIM (if not indicated, provisional refusal issued by OHIM on this ground!)
  • Possible claim of Seniority of an identical earlier mark registered in an EC member State, on separate form MM17, to be annexed to the international application (MM2) or the subsequent designation form (MM4)
  • ‘Opting-back’ provision: subsequent designation resulting from conversion
opting back conversion of the ec designation art 154 ctmr

Madrid System

Opting back: Conversion of the EC designation (Art. 154 CTMR)
  • designation refused by OHIM
  • designation ceases to have effect invalidation/cancellation/renunciation/no renewal)


conversion into national applications (Art. 108-110 CTMR)

International (Madrid): conversion into subsequent Madrid designations (Madrid Rule 24(7))

no translation necessary


Madrid System

Two Ways of Opting Back

“opting out”: conversion under EC law



European Community


“staying within”: subsequent designation under Madrid

opting back subsequent procedure

Madrid System

Opting Back - Subsequent Procedure
  • present request before OHIM within three months after refusal or ceasing of effect

(Arts. 154, 108 CTMR)

  • use form MM16 or the corresponding form provided by OHIM
  • OHIM will notify the request for subsequent designation (of all or some) of EC Member States to the International Bureau, which will then notify it to the designated EC Member States under Madrid(Madrid Rule 24(2)(a)(iii))
opting back effects of the subsequent designation resulting from conversion

Madrid System

Opting Back- Effects of the Subsequent Designation Resulting from Conversion
  • Keeping the date of the initial EC designation
  • If applicable, keeping seniority date of an earlier national mark registered in a Member State of the EC

Italy (2/11/2005)

Germany (2/11/2005)

Madrid System

France (2/11/2005)

Benelux (2/11/2005)

Opting back…in summary

All EC members individually/or, for example:



designating the usa

Madrid System

Designating the USA
  • Specification of G&S: specific limitation of the list in the IR with respect to the USA (to avoid a provisional refusal issued by the USPTO)
  • Bona Fide Declaration of Intention to Use the Mark (USA). Add form MM18 to MM2 or MM4)
  • In addition to the certificate of international registration issued by the IB, certificate of extension of protection issued by the USPTO.

Important: the certificate gives the date on which protection in the USA begins. This date is important for determining when affidavits of continuing use are due.


Main principles…in summary

Madrid System

  • an additional/ optional route
  • a closed system
  • only CPs to the Madrid System can be designated
  • one international registration =

a bundle of national registrations


Madrid System

Main advantages…in summary

  • simplicity
  • administrative efficiency
  • flexibility
  • economy

…both in respect of the filing of international applications and with regard to the subsequent management of international registrations

some significant filing increases in 2007 as compared to 2006
United States of America 3,741 18.8%

European Community 3,371 37.9%

United Kingdom 1,178 11.8%

Japan 984 16.2%

Russian Federation 889 42.9%

Hungary 438 101.8%

Norway 403 29.2%

Republic of Korea 330 73.7%

Madrid System

Some significant filing increases in 2007(as compared to 2006)

# applications growth


Madrid System

International Registrations in Forceat the end of 2007

  • 483,210 registrations in force
  • over 5.41 million active designations
  • 159,420 trademark owners
some top users holding registrations in force at the end of 2007

Madrid System

Some Top Usersholding registrations in force at the end of 2007

Henkel (DE);Janssen Pharmaceutica (BE);Novartis (CH);L'Oreal (FR);Unilever (NL);Société des Produits Nestlé (CH); Sanofi-Aventis (FR); Siemens Building Technologies Fire & Security Products (DE); BASF (DE); ITM Enterprises (FR); Bayer (DE); BIOFARMA (FR); Richter Gedeon (HU); Lidl Stiftung (DE); Kraft Foods (CH); Philips Electronics (NL); Boehringer Ingelheim Pharma (DE); Syngenta (CH); Ecolab (DE); Merck (DE); Fiat Auto Financial Services (IT); Deutsche Postbank (DE); Bongrain (FR); Hofer (AT); Lancome Parfums (FR); Plus Warenhandelsgesellschaft (DE); Migros (CH); DaimlerChrysler (DE); Wella (DE); MIP Metro (DE); Nycomed (DE); Renault (FR); Cognis (DE); Kodak (FR); Michelin (FR); Beiersdorf (DE); Akzo (NL); Sony (CH); Schering (DE); DSM (NL); Eckes (DE); Peugeot (FR); Pierre Fabre Médicament (FR); Citroën (FR); Gervais Danone (FR); KRKA (SI); Pierre Fabre (FR); Philip Morris (CH); Parfums Christina Dior (FR); Ferrero (IT); Volkswagen (DE); Groupe Auchan (FR); Alcon (CH); UCB Pharma (BE); Heraeus-Asalmaz-Katalysatoren (DE); BSH Bosh und Siemens Hausgeräte (DE), Reckitt Benckiser (NL); SEB (FR); Bayerische (DE); 3 SUISSES (FR); N.V. Organon (NL); Deutsche Telekom (de); Ciba (CH); OSRAM (DE); Zentiva (CZ); Intervet International (NL); Mülhens (DE); Chanel (FR); Reemstsma (DE); Bayer CropScience (FR); F. HOFFMANN LA ROCHE (CH); Accor (FR); Société d’Importation Leclerc (FR); Glaxo Group (GB); Clariant (CH)

more on statistics 2007

Madrid System

More on statistics 2007

Summary Annual Report 2007 on


Madrid System

Information Technologyan essential tool

International Bureau’s work aiming at

further developing electronic communication:

- with the Offices of Contracting Parties

- with users


Madrid System

Electronic communicationrapidly expanding

  • IB <-> Offices of Contracting Parties
    • eight offices (AU, BX, EM, KR, US, CH, JP, RU) send various types of communications to IB electronically
    • 48 offices receive notifications from IB electronically
  • IB <-> Holders and Representatives
    • electronic filing of renewals (since 2006)
    • notification of refusals and irregularities (since 2007)

Madrid System

Information products and services

Legal Texts and Guide - paper publication

- on line (free of charge)

WIPO Gazette -paper and DVD subscription

- on-line (free of charge)

Fee calculator- on line service (free of charge)

Madrid Express- on-line database (free access)

ROMARIN - on-line database (free access)

- DVD subscription


Madrid System

Repeal of the Safeguard Clausea compromise solution

  • Amendment of Article 9sexies of the Protocol
    • decision by the Assembly in 2007
    • entry into force on September 1, 2008
  • Adjustment of standard fees (100 CHF)
  • Amendments to the Common Regulations
    • consequential and related amendments
    • a full trilingual regime for the Madrid System

Madrid System

Repeal of the Safeguard Clausea compromise solution

Article 9sexies of the Protocol, known as

the “Safeguard Clause” provides that:

Where CPs are bound by both Agreement and

the Protocol, the provisions of the Agreement

shall prevail in the mutual relations between

those CPs


Madrid System

Amended Article 9sexies (Protocol)as of September 1, 2008

(1) (a) only the Protocol shall applybetween States bound by both A and P

(1) (b) declarations on extension of refusal period and/or individual fees by a State party to both A and P shall have no effect with respect to another State party to both A and P (limited application of the Protocol)

(2) Assembly shall review (1) (b) in three years time (and may thereafter repeal it or restrict its scope)


Madrid System

What Treaty Applies?


Egypt (A)


3 declarations

P (limited)

Turkey (P)

Spain (A/P)

P (limited)

2 declarations

Switzerland (AP)

3 declarations

Effects of the repeal of the SC

Italy (AP)





Up to Sept.1, 2008. Safeguard clause: A applies, not P





From Sept. 1, 2008. Repeal of the safeguard clause: P (limited) applies not A


Madrid System

Further Legal Development

  • Improving access by users of the Madrid System to information on fate of designations in designated Contracting Parties
  • Reconsidering the effects of the principle of “tacit acceptance” under the Madrid system
  • Make the issue of statements of grant of protection (now optional) compulsory for Offices?

Issues discussed within the Working Group on the Legal Development of the Madrid System (fifth session, May 5-9, 2008). For more information: see document MM/LD/WG/5/2 available on WIPO’s web site


Madrid System

Further Legal Development

  • Further ahead:
  • Further amendments to Article 9sexies ?
  • Review of basic requirement to file an i.a.?
  • Designation of CP of the applicant/holder ?
  • Marks in different scripts ?

Madrid System

Madrid System - Looking ahead

  • more Contracting Parties to the Protocol
  • a larger volume of registration activity
  • new and better services offered to usersand Offices
  • legal framework kept improved to meet with new developments and aimed at further simplification of the Madrid System
for more information

Madrid System

For more information


World Intellectual Property Organization

Thank you!

Silvia VincentiLegal OfficerLegal Service Sector of trademarks, Industrial designs and geographicalindications