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a. Introduction

The Madrid system for the international registration of trademarks is dominated by two treaties: the Agreement of Madrid of 1891 and the Madrid Protocol, dated 1996; the latter being thus more recent. The system is administered by the World Intellectual Property Organisation in Geneva.

The Madrid system groups together a sufficiently large number of countries that can be designated when filing an international trademark. It should be noted that an international filing does not automatically cover all member countries of the system (contrary to Benelux or community filing). In the international system, the applicant should indeed choose the countries where he wants his trademark to be protected. However, designation fees per country are due.

b. Definition of the international trademark

It is impossible to give a full definition of requirements to be met by an international trademark; the reason being that these requirements depend each time upon the national legislation of the designated countries . Fortunately, the majority of countries in the world have very similar definitions on what a trademark should be.

c. Filing an international trademark

A basic filing in the country of the trademark holder is obligatory to file an international trademark according to the Madrid system.

As a consequence, it is only possible for citizens of a member state of the system or for natural or legal persons -entities of common law require_onced-, having an actual and serious industrial or commercial establishment in one of the member states to use the Madrid system In other words, an American citizen, for example (the U.S.A. are presently not a member of the Madrid system), may not file an international trademark application except when the applicant has a company in one of the member states.

Whenever these conditions are met, all natural or legal persons - entities of common law require_onced - may file an international trademark.

Filing should be carried out in French (in case it relates exclusively to the Agreement) and in French or English in case it relates to the Agreement and to the Protocol or to the Protocol exclusively. The filing should be done with the national Office responsible for the above-mentioned basic filing. The national Office will transmit the filing to the WIPO.

If still possible, priority of the basic filing may be claimed for the international filing.

d. Agreement - Protocol

An international filing can be done in accordance with the Madrid Agreement only, in accordance with the Madrid Protocol only or in accordance with both. It is important to note that for most of the filing persons (more specifically the Benelux citizens, the French, the Germans, ...) these differences are of minor importance since they are allowed to file in accordance with both treaties. As a matter of fact, the major difference between both treaties to be noticed by the filing parties is the higher and more varying amount of fees to be paid for those countries that are exclusively members of the Protocol (e.g. Great Britain or Japan).

e. Examination proceedure

1. Examination of Formal Requirements

The WIPO proceeds to examine if the formal requirements have been met by the filing proceedure, namely: payment of official taxes, receipt of the trademark agent's power of attorney, etc. In case the trademark meets all formal requirements, the WIPO registers the application, attributes an application number and a date of filing and forwards the registration certificate to the holder or his mandatory. Thus the international trademark is fully registered before its examination with the national administrations (see below under 5.b) which may possibly lead to refusal in certain countries.

2. Examination of Absolute and Relative Grounds for Refusal

The application will then be addressed to the national administration of each designated country where protection of the trademark is requested.

In each of the designated countries the national administration has the authority to refuse protection of your trademark if it does not meet the requirements of the legislation in force in this country. However, a refusal should be based on grounds applied in accordance with the Convention of Paris, which means that protection may be refused (art. 6quinquies and 10bis of the Convention of Paris):

• if the trademark violates prior rights (relative grounds). Following the national legislation, this refusal can immediately be pronounced by the national Office or may be the result of an opposition proceedure;
• if the trademark is devoid of any distinctive character;
• if the trademark is contrary to public policy or to accepted principles of morality;
• if the use or registration of the trademark is contrary to honest usage in the industrial or commercial field.

In case a national administration refuses an international application, the applicant should be informed about the grounds for refusal within a period prescribed by national law. This delay may not exceed one year for those countries pertaining to the Agreement of Madrid. In case filing was carried out according to the Madrid Protocol, the applicant should be informed about this refusal within a period of 18 months. This notification of refusal can always be counteracted and/or the trademark protection can be limited.

It has to be noted however, that in most of the countries, the intervention of a local trademark attorney is obligatory to defend an international trademark before the national administration (these proceedures are carried out in the country's national language), especially in those cases where the national administration needs to be persuaded of the trademark's validity or in case of an opposition proceedure.

The intervention of a local agent may influence the procedural costs decisively.

f. Obligation of use

As opposed to the community trademark, the obligation of use is applied for each of the countries designated within the international registration. National laws rule this obligation of use and as a result it may vary from one country to another.

g. Designation after the international registration

The holder of an international trademark may at any time extend the territorial scope of his international registration to a member state, which was not initially designated. This proceedure of designating afterwards also allows for the extension of the territorial scope to a country, which was not a member state of the Madrid system at the moment of filing. An exception to this rule is that a territorial extension to China can only be obtained for international registrations later than October 4, 1989.

It is clear that in the case of a designation later on, the initial date of trademark protection in the country designated afterwards is the date of later designation and not the date of initial filing.

A basic fee for later registration as well as fees per country subsequently designated have to be paid when taking care of these formalities.

h. Depency upon the basic registration

For a period of 5 years starting from the date of international registration, the protection resulting from this registration will continue to depend upon the basic trademark's fate on which it has been based (cf. above 3.). In other words, whenever in this 5-year delay the basic trademark is nullified for whatever the reason might be (refusal of filing, nullification following an opposition, withdrawal, ...), the international registration will also be nullified and will be considered without any effects whatsoever.

This also implies that in case a third party aims nullification of your trademark for all countries, it suffices for him to obtain the nullification of the basic trademark within a delay of 5 years. This proceedure is known as « central attack ».

After this 5-year period of dependency, the international registration becomes independent from the basic trademark.

i. Duration

The international trademark is valid for 10 years starting from the date of filing and can be renewed as often as required. This renewal can be done for all designated countries or only for a few among them.

Previously, it was possible for the relevant registrations of the Arrangement of Madrid exclusively, to pay the remunerations for 20 years (which implies that certain prior international trademarks are still valid for more than 10 years).

Presently this has become impossible and regular practice shows that all recent international trademarks (either registered in accordance with the Agreement, with the Protocol or with both) should be the object of renewal after 10 years.

Annex I: Filing requirements

The information and documents required for filing a trademark are the following:

• name and address of the applicant, mentioning its legal form in case the applicant is a company
• a power of attorney, signed by an authorised person, mentioning name and function of the signatory
• in case of a figurative trademark, at least 8 copies of good printing quality (preferably laser, offset or bromide) having the following dimensions: maximum 8 x 8 cm and at least 1,5 x 1,5 cm
• a broad and complete description of the products and/or services offered under the trademark. Consequently, Office Van Malderen will take care of the correct classification thereof. Before the final filing of the trademark, the proposal for classification will be transmitted to you for approval. It has to be noted that although Office Van Malderen takes all due care to propose a correct classification, it is possible objections are raised. These can be overcome by argumentation during the later stages of the proceedure
• information concerning priority or seniority including date, number, country and a copy of the priority filing or relevant certificates, if Office Van Malderen was not responsible for the prior filing.

Annex II: List of the member countries of the international trademark

MADRID AGREEMENT (A) AND PROTOCOL (P)

(AG) Antigua-and-Barbuda (P)
(AL) Albania (A)
(AM) Armenia (A+P)
(AT) Austria (A+P)
(AU) Australia (P)
(AZ) Azerbaijan (A)
(BA) Bosnia-Herzegovina (A)
(BE) Belgium (A+P) *
(BG) Bulgaria (A+P)
(BT) Bhutan (A+P)
(BY) Belarus (A+P)
(CH) Switzerland (A+P)
(CN) China (A+P)
(CU) Cuba (A+P)
(CZ) Czech Republic (A+P)
(DE) Germany (A+P)
(DK) Denmark (P)
(DZ) Algeria (A)
(EE) Estonia (P)
(EG) Egypt (A)
(ES) Spain (A+P)
(FI) Finland (P)
(FR) France (A+P)
(GB) United Kingdom (P)
(GE) Georgia (P)
(GR) Greece (P)
(HR) Croatia (A)
(HU) Hungary (A+P)
(IE) Ireland (P)
(IS) Iceland (P)
(IT) Italy (A+P)
(JP) Japan (P)
(KE) Kenya (A+P)
(KG) Kyrgyzstan (A)
(KP) Republic of Korea (A+P)
(KZ) Kazakhstan (A)
(LI) Liechtenstein (A+P)
(LR) Liberia (A)
(LS) Lesotho (A+P)
(LT) Lithuania (P)
(LU) Luxembourg (A+P) *
(LV) Latvia (A+P)
(MA) Morocco (A+P)
(MC) Monaco (A+P)
(MD) Republic of Moldova (A+P)
(MK) Macedonia (A)
(MN) Mongolia (A+P)
(MZ) Mozambique (A+P)
(NL) The Netherlands (A+P) *
(NO) Norway (P)
(PL) Poland (A+P)
(PT) Portugal (A+P)
(RO) Romania (A+P)
(RU) Russian Federation (A+P)
(SD) Sudan (A)
(SE) Sweden (P)
(SG) Singapore (P)
(SI) Slovenia (A+P)
(SK) Slovakia (A+P)
(SL) Sierra Leone (A+P)
(SM) San Marino (A)
(SZ) Swaziland (A+P)
(TJ) Tajikistan (A)
(TM) Turkmenistan (P)
(TR) Turkey (P)
(UA) Ukraine (A+P)
(UZ) Uzbekistan (A)
(VN) Vietnam (A)
(YU) Yugoslavia (A+P)
(ZM) Zambia (P)

* : The territories of Belgium, Luxembourg et The Netherlands are forming one country for the application of the Agreement of Madrid since 01.01.1971