What is the Madrid Protocol?
The Madrid Protocol is an international convention administered by the World Intellectual Property Organisation (WIPO).
The protocol is a set of rule that facilitate international cooperation around the filing and management of international trade mark applications. There are currently over 100 member signatories, including many major jurisdictions such as Australia, the United States, the United Kingdom and the European Union.
The protocol is designed to allow trade mark filers a convenient and efficient method to file and manage trade mark applications in multiple jurisdictions, whilst protecting each member jurisdiction's sovereign capability to process applications in accordance with local rules and legislation.
What is Direct Filing?
Direct filing is the method where an application files for trade mark registration in each jurisdiction of choice. This is generally the only method available where the applicant's home jurisdiction, or the chosen destination jurisdiction, is not a member of the Madrid Protocol.
Traditionally, a direct filing application must abide by the destination jurisdictions legislation and rules. Often a local attorney must be retained to manage the application, as the jurisdiction requires the applicant to hold a domestic address for service of legal documents.
Madrid Protocol vs Direct Filing
The following table sets out some of the differences between the two methods.
Naturally, the choice of method to use should be considered carefully in line with the overall trade mark strategy, and the various advantages and disadvantages should be weighed against the applicant's specific requirements.
Can you select multiple jurisdictions in a single application?
The application can Designate (select from) 100+ member jurisdictions. It is possible to add jurisdictions later on via the Subsequent Designation process.
Each application is limited to the jurisdiction of filing. The exception is regional jurisdictions (such as the European Union) where a single application covers the entire region.
Is there a single point of filing / management / fee payments for all jurisdictions?
The application, management and renewal of the Madrid Protocol application is carried out via WIPO.
Each jurisdiction is separate and an application would need to be filed and managed in each jurisdiction. This can become complex to manage when multiple jurisdictions are required.
Which method is cheapter?
Madrid Protocol applications represent an administrative convenience and may be cheaper overall when multiple jurisdictions are required.
The costs of independently filing and maintaining each jurisdiction can add up, especially if multiple local attorneys need to be retained. However, for a single international jurisdiction, it may be cheaper overall to file directly.
Which method is faster?
Madrid Protocol applications require processing via WIPO before the application is sent to the designated jurisdiction. This can add to the overall processing time for the application.
However, some jurisdictions may prioritise processing of Madrid Protocol applications.
The Madrid Protocol regulations specify a maximum of 18 months for each local jurisdiction to issue an initial response.
Filing direclty avoids the requirement for WIPO processing, so it may be faster. However, some jurisdictions are notoriously slow.
Is an Australian trade mark required?
In order to file a Madrid Protocol application, the Applicant must have 1 or more existing Australian applications or registrations (known as "Basic Applications" or "Basic Registrations").
It is not necessary to have an Australian trade mark before filing directly overseas.
Is the international application tied to the Australian trade mark?
The Madrid Protocol application is tied to the Australian Basic Application/Registration for a period of 5 years. If the Australian trade mark fails or is reduced, then additional steps may be required to prevent the Madrid Protocol application from being limited or revoked.
Each directly filed application is separate and is not normally affected by any Australian application or registration.
Can convention priority be claimed?
Is an Australian domicile required?
To be eligible the applicant must be an Australian individual or organisation, or have an effective business presence in Australia.
However, some jurisdictions may have additional domestic requirements.
Is a local attorney required in each jurisdiction?
A Madrid Protocol application only requires appointment of a local attorney when the trade mark encounters an adverse event (eg an adverse Office Action or proceeding) or requires domestic maintenance (eg the US).
Most jurisdictions require a local attorney or representative to be appointed, or at least a domestic address for service of documents.
Is the application in English?
A Madrid Protocol application can nominate English, French or Spanish as the default language. Some domestic trade mark offices will communicate in their local language, however, all communications with WIPO are required to be in the designated language.
Non-English speaking jurisdictions may correspond in their local language. Non-English speaking jurisdictions may require a translation of the trade mark and/or the goods and services specification into their local language.