However, if the designated Contracting Parties verify the conformity of the international registration with their national law and certain substantive provisions are not complied with, they have the right to refuse protection in their territory. Such refusal, including an indication of the grounds on which it is based, shall normally be notified to the International Bureau within 12 months of the date of notification. However, a Contracting Party to the Protocol may declare that, if determined in accordance with the Protocol, this period shall be extended to 18 months. That Party may also declare that a refusal based on an objection may be notified to the International Bureau even after the expiry of the 18-month period. The applicant is required to designate at least one member country of the Madrid Protocol other than the country of origin when filing the international application. The applicant may choose to designate any number of member countries at the time of filing or after the granting of the international registration. Additional designations at later times are also permitted. The Protocol to the Madrid Agreement on the International Registration of Marks — the Madrid Protocol — is one of the two treaties that make up the Madrid System for the International Registration of Marks. The Protocol is a notification contract and not a substantive harmonization treaty. It offers trademark owners – individuals and businesses – a cost-effective and efficient way to ensure the protection of their trademarks in multiple countries by filing an application with a single Office, in a single language, with a set of fees and in a single currency. In addition, no local agent is required to submit the original application.
On the 31st. In July 2015, Algeria deposited its instrument of accession and will accede to the Madrid Protocol on 31 October 2015. As Algeria was the last member of the Madrid System to comply with the Protocol, it is now in force for the Madrid System as a whole. [7] A disadvantage of the Madrid system is that any rejection, withdrawal or deletion of the basic application or registration within five years of the date of registration of the international registration will result in the same degree of rejection, withdrawal or deletion of the international registration. For example, if a basic application covers «clothing, head coverings and shoes» and «head covering» is subsequently removed from the basic application (for whatever reason), «head covering» is also removed from the international application. Therefore, the protection offered by the international registration in each territory of the designated members extends only to «clothing and footwear». If the basic application as a whole is rejected, the international registration will also be completely rejected. The European Union Intellectual Property Office2 treats the designation of the EU somewhat differently from applications submitted directly to it; More information can be found on our separate page. 3 — An individual fee for each Party designated under the Protocol that has declared that it wishes to receive such a fee. The amount of each fee shall be determined by the respective Contracting Parties and shall be published in the WIPO Gazette of International Marks; Each of these Contracting Parties has the possibility, under the common rules, to provide that such a fee must be paid in two parts (the first part, to be paid at the time of filing the application, and the second, if and when the Office concerned is satisfied that the mark deserves protection); Two recent important developments in international trademark law were the accession of the United States and the European Union to the Madrid Protocol on November 2, 2003 and October 1, 2004, respectively.
With the inclusion of these jurisdictions in the Protocol, most major commercial jurisdictions have acceded to the Madrid System. The Madrid Protocol is an international agreement aimed at simplifying the international process for the registration of marks. This procedure allows registrants to complete a single application in their home language, which can then be applied to more than 90 member countries. However, it is important to note that this application does not grant comprehensive trademark protection. Although the Madrid Protocol simplifies the application process, it has nothing to do with permits. These are still produced from one country to another. For example, under the Protocol, it is possible to obtain an international registration on the basis of a pending trademark application, so that a trademark owner can effectively apply for international registration at the same time or immediately after filing an application in a member jurisdiction. In comparison, the agreement requires that the trademark owner already has an existing registration in a member jurisdiction, which can often take several months and sometimes years to obtain. In addition, the agreement does not provide for the possibility of «transforming» international registrations that have been «centrally attacked». Once the mark has been granted in certain countries, the owner of a mark only has to submit a single application to WIPO to renew the international registration if necessary, which would take effect in all designated member countries. Similarly, the completion of other formalities such as the registration of assignments, licenses, titles, mergers and changes of name and/or address, etc., requires only one application for each of them. This further simplifies brand maintenance and management in multiple countries and leads to significant cost savings.
It is possible to assign an international registration in whole or in part, including the breakdown by specific country/region. The assignment can only be registered if the new owner belongs to a member country/region or has a connection with a member country. If this is not the case, the assignment cannot be registered and the international registration or the transferred part remains in the name of the former owner. A basic fee must be paid for the filing of an international application (reduced to 10 per cent of the amount prescribed for international applications filed by applicants whose country of origin is an LDC in accordance with the list established by the United Nations); an additional tax for each class of goods and/or services exceeding the first three classes; and additional costs for each designated Party. However, a Contracting Party to the Protocol may declare that, when determined under the Protocol, the additional fee shall be replaced by an individual fee the amount of which shall be determined by the Contracting Party concerned but may not exceed the amount payable for the registration of a mark at the national level; with his desk. 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. .