The Madrid System

The Madrid System is a treaty for the international registration of trademarks.

It provides a cost-effective and efficient way for trademark owners to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. A huge advantage also is that no local agents are needed to file the application.

Even though an International Registration may be issued, it is still up to each individual country (or contracting party) to determine whether or not protection for a mark may be granted. Once the trademark office in a designated country grants protection, the mark is protected in that country just as if that office had registered it.

The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization's International Bureau (WIPO).

Under the Madrid system, there are three ways you can be eligible to nominate a Contracting Party as your “country of origin” to file an international application:

1) if you are a national of that country; or

2) If you are domiciled there; or

3) If you have a real and effective commercial or industrial establishment in that country.

The interpretation of what may be considered nationality, domicile or real and effective commercial or industrial establishment is mainly a matter for the law of the Contracting Party concerned.

Nationality is taken to include both natural persons and legal entities. 

The term “real or effective commercial or industrial establishment” is taken to mean an establishment at which some commercial or industrial activity takes place, but it is not required that this be the principal place of business of the applicant.  Thus, an applicant may have several real and effective commercial or industrial establishments in different States that are Contracting Parties to the Madrid system.  In such case, the Office of any of those States may qualify as the Office of origin.  However, it is considered that the existence, for example, of a mere warehouse would not constitute “real and effective” establishment. 

If you have any questions about filing an application through the Madrid System, please contact us!