The Madrid System for the International Registration of Marks

By DMLF

The Madrid System for the International Registration of Marks is a centralized system that simplifies the process of registering trademarks in multiple countries. It’s administered by the World Intellectual Property Organization (WIPO). Under this system, trademark owners can file a single application with WIPO to protect their mark in multiple member countries. This streamlines the registration process, reduces administrative burdens, and provides cost savings for trademark owners. It’s a convenient option for businesses looking to protect their brand internationally without having to navigate the separate procedures of each country.

The Madrid System for the International Registration of Marks is governed by two treaties namely a) the Madrid Agreement, concluded in 1891 and revised at Brussels (1900), Washington (1911), The Hague (1925), London (1934), Nice (1957) and Stockholm (1967), and amended in 1979, and b) the Protocol relating to that Agreement, concluded in 1989, which aims to make the Madrid system more flexible and more compatible with the domestic legislation of certain countries or intergovernmental organizations that had not been able to accede to the Agreement.

The system makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated Contracting Parties.

One can file an application for international registration (international application) as  a natural person or legal entity having a connection – through establishment, domicile or nationality – with a Contracting Party to the Agreement or the Protocol.

A mark may be the subject of an international application when the mark has already been registered with the trademark office of the Contracting Party with which the applicant has the necessary connections. Nevertheless, in the situation whereby all the designations are effected under the Protocol, the international application may be based simply on an application for registration filed with the office of origin. An international application must be presented to the International Bureau of WIPO through the intermediary of the office of origin.

The Madrid System offers several benefits for trademark owners:

1. Simplified Process: Instead of filing separate applications in each country, trademark owners can file a single application with WIPO, simplifying the administrative process.
2. Cost-Effective: The Madrid System can be more cost-effective compared to individual filings in multiple countries, as it reduces fees associated with separate applications.
3. Centralized Management: Through a single application, trademark owners can manage their trademark registrations in multiple countries, making it easier to maintain and enforce their rights.
4. Efficiency: The Madrid System can expedite the registration process, as WIPO coordinates with member countries to process applications more efficiently.
5. Flexibility: Trademark owners can expand their international protection over time by adding new member countries to their existing international registration.
6. Saves Time: It saves time by avoiding the need to navigate the different procedures and requirements of each individual country’s trademark office.

Overall, the Madrid System offers a streamlined and convenient way for trademark owners to protect their marks internationally, providing both cost savings and administrative efficiency.

Ethiopia is a party to the World Intellectual Property Organization (WIPO) but has not yet joined theMadrid System. Ethiopia maintains a relatively comprehensive regulatory and legislative system for the protection of intellectual property through the regulatory body namely the Ethiopian Intellectual Property Authority( EIPA). The EIPA oversees and administers intellectual property rights (IPR) matters.  However, the Ethiopian government expressed its interest, according to Africa IP SME Helpdesk, to accede among others to the Madrid Protocol and EIPA was tasked with the  draft ratification proclamation.

To sum up, the Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. Ethiopia is not yet a member of the Madrid System. Given the advantages to start-ups and big corporations, Ethiopia will be evaluating the pros and cons and decide on joining the Madrid System.

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