A disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of the basic application or registration within five years of the date of registration of the international registration will result in the rejection, withdrawal or cancellation of the international registration to the same extent. For example, if a basic application covers “clothing, headgear and footwear” and “head covering” is removed from the basic application (for any reason), “head covering” is also removed from the international application. Therefore, the protection offered by the international registration in each designated member jurisdiction extends only to “clothing and footwear”. If the basic application is rejected in its entirety, the international registration will also be rejected in its entirety. The USPTO currently requires more specificity in product and service descriptions compared to most other countries. As a result, protocol registrations based on U.S. filings and registrations are narrower than registrations obtained through foreign trademark offices. The sole purpose of the conclusion of the Madrid Agreement was to provide a mechanism for a person to file a single international registration of a mark. This process has only simplified registration worldwide, but has also made it cost-effective and a cost-effective technique for registering a trademark.

The Madrid Agreement not only simplified the process of registering international marks, but also eliminated the need to submit, track or maintain separate applications for registration in several countries. The Madrid Agreement confers on the mark the same legal status in all Member States as in the registered country from which it bears its name. If the Trademark Office located in the designated country does not send a rejection to the World Intellectual Property Organization within 12 months, the trademark benefits from the protection of the national trademark registered in that country. The Madrid Agreement also provides for a simple system for renewing a mark by means of a single application to WIPO. The Madrid Protocol can be a “one-stop shop” for a global registration and maintenance programme. For early protection, simultaneous global protection or sites with low local representation, the use of the Madrid Protocol should be considered. For the protection of broader trademarks, local ownership of the mark, marks that change over time or protection in third countries, the use of other registration systems should be considered. It is important to properly analyze the appropriate enforcement and protection strategy for your company`s brands with advice.

The Protocol has been in force since 1996 and has 100 members[5], making it more popular than the agreement, which has been in force for more than 110 years and has 55 members. [4] The main reason why the Protocol is more popular than the Agreement is that it introduced a number of amendments to the Madrid System that have significantly increased its usefulness to trademark owners. Businesses should consider the benefits of filing an application for international trademark protection under the Protocol, and the time has come to start planning. If the U.S. adheres to the protocol, not only domestic companies will rush to seek foreign protection, but also foreign trademark owners who want protection in the No economy. 1 of the world, will clog the already tense USPTO trademark system. The Madrid Protocol is coming to America, and it`s no secret that strategic planning and preparation is essential to ensuring that U.S. trademark owners receive valuable international protection. The Madrid System (officially the Madrid System for the International Registration of Marks) is the main international system to facilitate the registration of marks in several jurisdictions around the world. Its legal basis is the Multilateral Treaty of the Madrid Agreement on the International Registration of Marks of 1891 and the Protocol on the Madrid Agreement (1989). The objective of the adoption of the Madrid Protocol was to correct the shortcomings of the Madrid Agreement. However, the purpose and purpose of the Madrid Protocol and the Madrid Agreement are the same, namely to create a simple and cost-effective international trademark registration procedure.

The Madrid Protocol aims to ensure the protection of trademarks in several countries by filing a single application with a single Office in a single language and in a single currency. A person does not need a local representative to submit an application. The Madrid Protocol also simplifies the management of the mark, as an individual has a simple and unique procedural step to register changes with the International Bureau, which regulates the Madrid System and coordinates all kinds of applications for protection or renewal and other documents to all members. The Madrid Agreement entered into force in 1891 and remains a viable system for the registration of marks. Countries that are parties to this Treaty shall act by dealing with other Members of the Convention on its terms, even if those countries are also members of the Madrid Protocol. Since there is only one international registration number per mark, if the applicant needs to register a change of name, only one application and one fee with the trademark office of the applicant`s country of origin are required. The international registration also requires only one extension, which saves on reflection costs and filing fees. Basically, the main advantage of the Madrid System is that it allows a trademark owner to obtain protection for a trademark in one or all Member States by filing an application in a jurisdiction with a single fee rate and amending (e.B. change of name or address) and renews registration in all applicable jurisdictions by means of a single administrative procedure. .