When an SME wants to register an IPR in different countries there are two alternatives, to apply for the IPR before each national office or to use one of the WIPO international registration systems, namely Madrid System (trademarks), Patent Cooperation Treaty (patents) and Hague System (Designs).
In this post we are going to explain how Madrid System can be a useful tool for EU SMEs that aim to protect their trademarks abroad, benefiting from simpler and cost-effective proceedings.
The Madrid System is not implemented in most Latin American countries. Nevertheless, this situation is expected to change in the near future, therefore EU companies that want to internationalise to Latin America may be interested in registering its trademark through Madrid System on the current members (Colombia, Cuba and Mexico) and hopefully, extend the protection to further members once them enter into the system.
What is Madrid System?
Madrid System is the WIPO International Trademark Registration system governed by the Madrid Protocol and Agreement. It allows trademark applicants to apply for registration in various countries simultaneously with a single application.
Who can benefit from the system?
Any national or company from a Member State of the Protocol or the Agreement. All EU Member States have ratified the Protocol.
In which Latin American countries could I apply from protection through Madrid System?
Only a few Latin American countries (Colombia, Cuba and Mexico) are members of the Madrid System.
How does it work?
EU applicants can request an International Trademark Registration before their own national IP office or the EUIPO (Office of Origin). The International application must be based on a prior trademark application or registration (both EU and national trademarks are accepted).
Thereafter the Office of Origin submits the application to WIPO, that performs the formal examination, publishes it on the WIPO Gazette of International Marks, and send it to each national IP office where the applicant want to protect the trademark (Designated Party).
IMPORTANT! Each national office is entitled to perform the substantive examination according to its internal regulation and to reject or register the trademark within 12 months (Cuba) or 18 months (Colombia and Mexico). In case of third parties oppositions, the term in Colombia to reject the trademark might be extended.
Once the trademark is registered in all or some of the countries the renewal and modifications are centralised by WIPO and you can manage it as a single registration.
It strongly depends on the number of countries, the type of trademark and the number of classes for which protection is sough.
What are the main advantages?
Madrid applicants may benefit from certain advantages over those that prefer to register on a country-by-country basis:
- The trademark is applied for in a single language: English, Spanish or French, without the need of further translations.
- Applicants benefit from a simplified application proceeding instead filing a bundle of applications before each national office.
- Each due fee is paid in a single currency (Swiss francs) and a single payment.
- Any modification, renewal or transfer can be done directly before WIPO with effects in all Designated Parties.
- As a general rule, it is not mandatory to appoint and pay a representative on each Designated Party except in certain cases (e.g. the trademark is opposed)
- Once registered, it is possible to extend the International Trademark protection to other countries by means of subsequent designations. This is very useful if the company wants to enter into new markets or if a new Latin American country in which the SME operates enters Madrid System.
Want to know more?
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