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Currently there are 83 countries that have signed up to the Madrid Protocol which is part of the Madrid System managed by WIPO. See below for the advantages and disadvantages of using the Madrid Protocol. Basically, these countries have agreed to a common application form which can be used for multiple countries and mostly without any additional documentation.
Applying for trade marks using the Madrid Protocol can represent a significant cost and time saving when you have four or more countries you want to register. See the list below of countries covered by the Madrid Protocol. (CTM stands for Community Trade Mark and covers all 27 countries of the European Union. The CTM is the cheapest way to register across the European Union and includes
Malta, which the Madrid Protocol does not)
Madrid Protocol Countries
EUROPE Albania, Austria (CTM), Belarus, Belgium (CTM), Bosnia and Herzegovina, Bulgaria (CTM), Croatia, Cyprus (CTM), Czech Republic (CTM), Denmark (CTM), Estonia (CTM), European Community (CTM), Finland (CTM), France (CTM), Germany (CTM), Greece (CTM), Hungary (CTM), Iceland, Ireland (CTM), Italy (CTM), Latvia (CTM), Liechtenstein, Lithuania (CTM), Luxembourg (CTM), Macedonia, Moldova, Monaco, Montenegro, Netherlands (CTM), Norway, Poland (CTM), Portugal (CTM), Romania (CTM), Russian Federation, San Marino, Serbia, Slovakia (CTM), Slovenia (CTM), Spain (CTM), Sweden (CTM), Switzerland, Ukraine, United Kingdom (CTM)
MIDDLE EAST Bahrain,
Iran, Israel,
Oman,
Syria
,
Turkey
AFRICA Botswana, Egypt, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, Sao Tome and Principe, Sierra Leone, Sudan, Swaziland, Zambia
NORTH AMERICA
United States of America
CARIBBEAN
Antigua and Barbuda,
Cuba
CENTRAL AMERICA None
SOUTH AMERICA None
ASIA/AUSTRALASIA Armenia, Australia, Azerbaijan, Bhutan, China, Georgia, Japan, Khazakstan, Kyrgyzstan, Mongolia, North Korea, Singapore, South Korea, Turkmenistan, Uzbekistan
Viet Nam
Advantages of the System
Only need to file one application, in one language, and pay one fee instead of filing separately in the trademark Offices of the various countries in different languages and paying a separate fee in each Office.
The applicant does not have to wait for the Office of each country in which protection is sought to take a positive decision to register the mark; if no refusal is notified by an Office within the applicable time limit, the mark is protected in the country concerned. In some cases, the applicant does not even have to wait the expiry of this time limit in order to know that the mark is protected in a country, since he may, before the expiry of the time limit, receive a statement of grant of protection from the Office of that country.
Changes subsequent to registration, such as a change in the name or address of the holder, or a change (total or partial) in ownership or a limitation of the list of goods and services may be recorded with effect for several designated countries through a single simple procedural step and the payment of a single fee.
There is only one expiry date and only one registration to renew.
Disadvantages of the System
For a period of five years from the date of its registration, an international registration remains dependent on the mark registered or applied for in the Office of origin – for example, your UK or Community Trade Mark. If, and to the extent that, the basic registration ceases to have effect, whether through cancellation following a decision of the Office of origin or a court, through voluntary cancellation or through non-renewal, within this five-year period, the international registration will no longer be protected.
Similarly, where the international registration was based on an application in the Office of origin, it will be canceled if, and to the extent that, that application is refused or withdrawn within the five-year period, or if, and to the extent that, the registration resulting from that application ceases to have effect within that period.
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