60.1. Introduction

1.1  What is the Madrid Protocol?

The Madrid Protocol is a treaty providing for the international registration of trade marks. It is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO). By filing a single application (called an international application) in English and paying one set of fees, an Australian trade mark owner can obtain a single registration (called an international registration) to seek protection of the trade mark in several countries or intergovernmental organisations. More countries or intergovernmental organisations can be added to an international registration (by filing a subsequent designation) as the owner's market expands or if other countries or intergovernmental organisations join the Protocol.

An international application must be based on an existing national trade mark application or registration - referred to as the basic trade mark. The owner of the international application must be the same as the national trade mark, the trade mark identical to the national trade mark and the goods/services the same or less than the national trade mark.

Persons living in, carrying on business in or having the nationality of, a country or intergovernmental organisation party to the Protocol, may apply by single application for international registration and protection of their trade mark in one, some or all of the other member countries or  intergovernmental organisations. The other countries or intergovernmental organisations nominated by the applicant are known as designated Contracting Parties.

The owner of an existing national trade mark may only file an international application in Australia if they are an Australian national, are domiciled in Australia, or have a real and effective industrial or commercial establishment in Australia.

1.2  Background

In 1891 the World Intellectual Property Organization (WIPO) set up an international system for the registration of trade marks called the Madrid Agreement Concerning the International Registration of Marks (the Agreement). To address concerns some countries had with the Agreement, the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks (the Protocol) was developed. Signed at Madrid on 28 June 1989, the Protocol came into force on 1 April 1996.  A list of current member states is available from the WIPO web site.

Since October 31, 2015, the Protocol is the only operational treaty of the Madrid System and, since that date, provisions regulating international applications under the Agreement are no longer operational.  Moreover, on October 11, 2016, the Madrid Union Assembly (referred to as “the Assembly”) froze the application of Article 14(1) and (2) of the Agreement to consolidate the Madrid System as a one-treaty system.

On February 1, 2020, the Regulations under the Madrid Protocol relating to the Madrid Agreement concerning the International Registration of Marks entered into force, replacing the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. The Assembly adopted the Regulations at its fifty second session, in October 2018.

The Regulations reflect the above-mentioned consolidation by referring to the Protocol only, by deleting provisions that are no longer operational and by amending certain provisions for the sake of coherence. These changes were not substantive in nature.

In October 2018, following the adoption of the Regulations, the Assembly adopted consequential amendments to the Schedule of Fees, which also entered into force on February 1, 2020.  The amounts of the fees did not change.

Changes to the Administrative Instructions for the Application of the Protocol relating to the Madrid Agreement concerning the International Registration of Marks (referred to as “the Administrative Instructions”) also entered into force on February 1, 2020.  The provisions in the Administrative instructions have been slightly amended to reflect the name of the Regulations and, for the sake of consistency, deleted “paper” from Section 5 and “telefacsimile” from Section 12(d), and added “typed” in Section 7 of the Administrative Instructions.

1.3  What are the Benefits?

A centralised international registration system is often cheaper and simpler than filing separate applications in each country. Under the Protocol Australian manufacturers and service providers with overseas interests can seek to protect their trade marks in a number of countries or intergovernmental organisations with one application. A single request accompanied by the relevant fees is all that is required to make changes to, and renew international registrations.

1.4  Protection Extended

When an international registration is granted protection in a designation, the trade mark has the same protection that is extended to a national registration in that designation. The protection of an international registration can be refused on the basis that it does not meet the requirements of a designated Contracting Party's trade mark legislation. The IB must be notified of the provisional refusal within 12 or 18 months (depending on timeframe chosen by the designated Contracting Party under Article 5 of the Protocol) from the date on which the IB notifies the designated Contracting Party of the international registration.

In the case of an international registration that has designated Australia (IRDA), the IB must, within 18 months of the date on which the IB has notified IP Australia of the international registration, be notified of:

• provisional refusal, and/or
• the possibility of refusal based on an opposition filed after the 18 month period ends.

Where neither of these occurs within that 18 month period, there is no refusal in Australia and full protection is extended to the international registration.

1.5  The Process of International Applications and Registrations

An international application must be based on one or more trade mark applications or registrations in a Protocol country or intergovernmental organisation  where the applicant lives, carries on business or is of that nationality. The application must be made through that Protocol member’s trade mark office (Office of origin). That office certifies that the applicant(s) named in the international application is the same as the owner(s) of the basic trade mark(s), the trade mark representation is the same as the national basic trade mark application(s) or registration(s), the goods and/or services listed In the international application are covered by the scope of the basic mark(s), and that any indications, such as a claim to colour as a distinctive feature of the mark, are the same as those contained in the basic mark. Once certified, the Office of origin forwards the international application to the IB. The international application must designate at least one Protocol member (but cannot designate the Office of origin).

The IB checks the formalities, fees and classification of the goods and/or services of an international application. It also indexes marks containing device elements according to the Vienna Classification system. When the international application is in order it is recorded in the International Register, a certificate of registration is sent to the owner, who is then known as the holder, and the details are forwarded to all designated Contracting Parties. At this stage an international registration has the same level of protection in a designated Contracting Party as an application filed directly with that Office

Each designated Contracting Party examines the international registration in accordance with its own trade mark legislation. If there are objections during examination, or opposition is lodged, the designated Contracting Party must notify the IB, which in turn advises the holder. In these cases the designated Contracting Party may also insist that the holder reply through an address for service in  that Contracting Party. For example, Australia requires that the holder of an IRDA notify IP Australia of an Australian or New Zealand address for service if they wish to respond to any provisional refusal based on examination and opposition matters.

1.6  Subsequent Designations

Additional Contracting Parties can be added to the international registration later and are called subsequent designations. This may happen when a holder's markets expand, or other countries or intergovernmental organisations join the Protocol.

The IB and the designated Contracting Parties treat the request for subsequent designation(s) in the same way as international applications; that is, the request is checked by the IB, then examined in the newly designated Contracting Party(ies) according to the trade mark legislation of that Contracting Party.

The effective date for a subsequent designation is the date the request for subsequent designation(s) is recorded in the International Register. This is usually the date the request is received by the IB or the Office (if the request was presented to the national or regional IP Office of the Contracting Party of the holder). The date of a subsequent designation may be affected if it contains a request that it takes effect after the recording of another change in the International Register or after renewal of the international registration, or it contains irregularities.

An application for subsequent designation can only be made once the initial international trade mark application has been placed on the International Register and allocated a registration number. Not all Contracting Parties allow for subsequent designations. These Contracting Parties have made a declaration under Article 14(5) of the Madrid Protocol. In these cases, a new international application designating that Contracting Party has to be filed.

1.7  Basic Application or Basic Registration (Basic Trade Mark)

An international application must be based on an existing application(s) or registration(s) (basic trade mark) in a Contracting Party to the Madrid Protocol. The international application must have the same owner(s) as the basic trade mark, the identical trade mark as the basic trade mark(s) and cover the same, or some only of the goods and/or services as the basic trade mark(s). It must also contain any indications, such as a claim to colour as a distinctive feature of the mark, that are contained in the basic trade mark(s).

An international application may have more than one basic trade mark where the goods and/or services of the international application are spread over several national applications and/or registrations. In countries which do not have, or have not always had, a multi-class trade mark application system it is possible for many separate trade mark applications or registrations to form the basic trade mark(s) for an international application. This may be the case with regard to some basic Australian trade marks which were registered prior to the introduction of the Trade Marks Act 1995.

1.8  Replacement

Replacement can occur when the holder of an international registration to which protection has been extended in a designated Contracting Party already has a registered trade mark in that Contracting Party and:

• both the national or regional registration and the protected international trade mark are in the name of the same holder(s),
• the trade marks are identical,
• all the goods and/or services of the registered trade mark are covered by the protected international trade mark, and
• the extension of protection of the international trade mark takes effect after the date of the national or regional registration.

The holder may request replacement of the registered trade mark.  The protected international trade mark then has the benefit of the date of registration of the earlier registered trade mark, including any priority date, for the goods and/or services covered by that registration.

1.9  Renewal

Renewal of an international registration is due 10 years from the date of the international registration. This is usually the date on which the international application was received by the Office of origin. At the time of renewal, the holder has to pay renewal fees for all the Contracting Parties covered by the international registration concerned including those subsequently designated. The IB notifies the holder or their representative six months before the international registration is due to expire.

Renewals of international registrations may be made up to three months before the date on which the renewal of the international registration is due or within six months after the expiry date (referred to as the grace period). Where the renewal fee is paid within the six month grace period a 50% surcharge will be applied.

1.10  Fees

Fees for international applications and international registrations are payable directly to the IB in Swiss francs.