The Madrid Trademark System: Protecting Trademarks Internationally

The Madrid Trademark System, administered by the World Intellectual Property Organization (WIPO), is a centralized system for registering and managing trademarks in multiple countries.1 By providing a centralized streamlined system, it allows businesses to protect their brands internationally with greater ease and efficiency. The Madrid system comprises of two treaties: the Madrid Agreement (1891) and the Madrid Protocol (1989). WIPO provides an online search feature where one can keep up to date with international trademark registrations.2

Before delving into the specifics of the Madrid System, it is essential to understand the concept of a trademark and how its protection is typically acquired. A trademark is a distinctive sign or symbol used by a business or individual to identify and distinguish their products or services from others.3 This can include words, phrases, logos, symbols, designs, or combinations of these elements.4 Trademarks serve as a brand's identity, helping consumers recognize and associate the mark with the quality and reputation of the goods or services it represents. Legal protection for a trademark often begins with its creation and use in commerce, providing common law rights in the geographical area where it is used.5 For formalised protection, a trademark should be registered with the appropriate government authority, such as the Kenyan Industrial Property Institute. Registration grants exclusive rights, public notice and legal presumptions.6 A trademark must be distinctive, either inherently or through extensive marketplace use.7 Maintaining protection requires ongoing use, periodic renewal, and active enforcement of trademark rights.8

Inception and Evolution of the Madrid Trademark System

The Madrid Agreement was adopted in 1891 to provide an international mechanism for trademark registration.9 Subsequently, The Madrid Protocol was introduced in 1989, and officially came into force on 1 April 1996, enhancing the system's functionality and global reach.10 The Protocol modernized the system and extended its accessibility, allowing trademark owners to apply for protection in several countries through a single application filed with their home country's trademark office.11

Structure and Registration Procedure

WIPO offers a system known as the Madrid Assistant that allows applicants to generate a form that can be used as a filing document in their country of origin. To access this system, an applicant must create a WIPO account.

Summary of the Registration Procedure:

1. Input Applicant Details: The applicant must provide their personal or business details. To use the system, the applicant must be from a member state of the Madrid Agreement or its protocols, meaning they can be domiciled, a national, or have a business presence in a member state.
2. Input Representative Details: While not mandatory, WIPO strongly recommends having a legal representative. The applicant should provide the representative's details, including an email address different from the applicant's.
3. Language and Correspondence: Applicants can choose their preferred language for WIPO communications from English, Spanish, or French.
4. Mark Details: Applicants must provide details of the trademark, including whether it is a text, 3D, color, sound, or combination mark. They should also specify the type of trademark (ordinary, collective, or certification). Applicants may claim specific colors in the trademark and must provide translations of the mark's words into English, Spanish, or French, depending on the countries where protection is sought.
5. Goods and Services: Applicants must choose the classes of goods and services for which they seek trademark protection, using the Nice Classification system.12
6. Limitations: Applicants can specify limitations on the classes of goods and services in certain designated countries.
7. Priority claim: The Madrid Assistant allows applicants to claim an earlier filing date, offering protection against later filings by competitors. This priority must be claimed within six months of the basic application, specifying the classes of goods and services for which priority is sought.13
8. Seniority Claim: Relevant only for designations in the European Union, seniority claims are possible if the applicant has an earlier trademark registration in the EU.
9. Declaration Form For applications to the USA, applicants must sign a declaration form confirming the accuracy of the provided information.
10. Fee Calculation The system calculates the fees based on the number of classes and designated countries.14
11. Payment The website provides details on payment methods. Payments can be made using credit or debit cards.

Summary The website generates the MM2 form, which must be submitted to the applicant's office of origin. The Madrid Assistant helps generate the necessary documents but does not file the application directly.15

Once the application has been submitted, each designated country's trademark office examines the application according to its national laws and decide within 12 to 18 months whether it can be protected.16 Once an IP Office accepts the mark, it issues a grant of protection, however, if an IP Office refuses protection, an applicant can appeal directly to that IP Office.17 The international registration of a mark is valid for 10 years and can be renewed at the end of each period.18

Kenya's Accession to the Madrid System

Kenya became a party to the Madrid Protocol on 26 June 1998, with the Protocol entering into force in Kenya on 26 September 1998.19 This accession marked a significant milestone in Kenya's efforts to integrate into the global intellectual property system, providing Kenyan businesses with a streamlined process for protecting their trademarks internationally.

Impact on Trademark Owners in Kenya

The accession to the Madrid System has had several significant impacts on trademark owners in Kenya, including the following:

Simplified Application Process: Kenyan businesses can now file a single international trademark application, reducing the administrative burden and costs associated with filing multiple national applications.20

Cost Efficiency: By eliminating the need for separate applications in each country, the Madrid System offers cost savings in terms of filing fees, translation costs, and legal fees.21

Centralized Management: Trademark owners can manage their international registrations centrally, including renewals and changes, through WIPO's e-Madrid service.22

Enhanced Global Reach: The system facilitates easier and broader market access for Kenyan brands, enabling them to compete more effectively in the global marketplace.23

Challenges and Considerations

Despite its advantages, the Madrid System also presents challenges, including the following:

1. Dependency on National Applications: The international application is dependent on the basic national application or registration for the first five years; if the basic application is rejected or the registration is cancelled, the international registration may also be affected.24
2. Complexity in National Procedures: While the Madrid System simplifies the filing process, trademark owners must still navigate varying national examination procedures and compliance requirements from the respective designations.25
3. Complexity in Handling Multiple Applicants: The Madrid System poses a significant operational challenge in cases involving multiple applicants to one single trademark. Each applicant must meet the eligibility criteria independently, complicating the application process.26 This requirement can lead to logistical and legal complexities, particularly when applicants are from different jurisdictions and do not all meet the necessary domicile, nationality, or real and effective industrial or commercial establishment requirements.27

Global Impact of the Madrid System

The Madrid System significantly enhances international trade and commerce by simplifying the process of trademark registration across multiple countries. This system enables businesses to file a single application in one language and pay one set of fees to seek trademark protection in up to 115 member countries.28 This unified approach reduces the complexity and cost associated with securing trademark registrations in multiple jurisdictions, making it easier for businesses to protect their brands globally.29

For African traders the Madrid system offers simplified registration procedures where one application can be protected in several African states including but not limited to Zimbabwe, Zambia, Tunisia, Sudan, Senegal, Rwanda Namibia, Mozambique, Malawi, Madagascar, Kenya Ghana. Botswana, Capo Verde and members of the African Intellectual Property Organisation (OAPI).30 This makes it an attractive option by significantly reducing the time, cost, and complexity associated with securing trademark protection across multiple jurisdictions.

For developing countries like Kenya, the Madrid System provides opportunities for economic growth by enhancing the protection of trademarks.31 Registering trademarks that can be protected abroad would be beneficial for African applicants seeking to increase their brand awareness in foreign markets.32

Conclusion

The Madrid Trademark System is a pivotal mechanism for international trademark registration, offering significant advantages in terms of simplicity, cost-efficiency, and centralized management. Kenya's accession to the Madrid Protocol has facilitated greater global market access for Kenyan businesses, enhancing their ability to protect and manage their trademarks internationally with ease. This system not only simplifies the application process but also reduces the administrative burden and costs associated with securing trademark protection in multiple countries.

However, the Madrid system is not without challenges. Trademark owners must navigate dependencies on national applications, varying national examination procedures, and complexities involving multiple applicants. These challenges necessitate a robust understanding of both the international and national trademark frameworks. 

Despite these hurdles, the advantages of the Madrid System far outweigh its drawbacks. By leveraging the system's benefits, trademark owners and legal practitioners can ensure the effective protection of intellectual property in the global marketplace. The CIPIT Industrial IP rights database aims to highlight registered trademarks filed using the Madrid system, providing a valuable resource for those looking to protect their brands internationally.33

By understanding the intricacies of the Madrid System, trademark owners and legal practitioners can better leverage its benefits while mitigating potential risks, thus ensuring the effective brand protection in the global marketplace.

Image is from pix4free.org.

1 There are 113 countries who are parties to the Madrid Agreement. The list can be found here WIPO < WIPO Lex> accessed 15 July 2024.

2 WIPO <WIPO Madrid Monitor> accessed 15 July 2024.

3 WIPO, ‘What is a Trademark?’ < Trademarks (wipo.int)> accessed 15 July 2024.

4 Section 2 Trade Marks Act [Act No.51 of 1955] eKLR.

5 Sony Corporation v Sony Holding [2015] eKLR.

6 Section 7 and Section 8 Trade Marks Act [Act No.51 of 1955] eKLR.

7 JY and John Yiokaris, 'Distinctiveness in Registered Trademarks' (14 June 2021) https://www.example.com/article accessed 15 July 2024.

8 Ibid.

9 The Madrid Agreement Concerning the International Registration of Marks <WIPO Lex> accessed 20 June 2024.

10 World Intellectual Property Organization, 'The Madrid Agreement (1891) and the Madrid Protocol (1989)' (WIPO, 2021) < WIPO Madrid System – International Trademark Protection > accessed 20 June 2024.

11 WIPO, Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks’ <WIPO Lex> accessed 7 August 2024.

12 WIPO, ‘Nice Classification’ < Nice Classification (wipo.int)> accessed on 7 August 2024.

13 Article 4, Paris Convention for the Protection of Industrial property. 

14 WIPO < Madrid System: Schedule of Fees (wipo.int)> accessed 31 July 2024. All fees are to be paid in Swiss Franc. See also para 17 The Madrid Agreement concerning the International Registration of Marks and the Protocol Relating to that Agreement: Objectives, Main Features, Advantages < 418E:2804-Madrid06-418-E-doc.qxd.qxd (wipo.int)> accessed 31 July 2024.

15 WIPO < How to File an International Trademark Application | GoToStage.com> accesses 7 August 2024 that gives a comprehensive tutorial of how to use the Madrid Assistant.

16 World Intellectual Property Organization, Protecting Your Marks Abroad, The Madrid System, WIPO Publication No. 1039E/2013 < https://www.wipo.int/edocs/pubdocs/en/marks/1039/wipo_pub_1039.pdf> accessed July 15, 2024

17 Ibid.

18 Ibid.

 19 World Intellectual Property Organization, IP Treaties Collection < WIPO Lex> accessed on 22 June 2024.

20 See WIPO Lex where Kenya is listed as a party to the Madrid Protocol. Applicants from Kenya can also use the Madrid Assistant to simplify the process.

21 Victor Nzomo ‘The International Trademarks Registration System from a Kenyan Perspective’ (CIPIT, 2014) < The International Trade Marks Registration System From A Kenyan Perspective - Centre for Intellectual Property and Information Technology law (strathmore.edu)> accessed on 21 June 2024.

22 Ibid.

23 Josh Gerben Esq, ‘The Advantages and Disadvantages of Using the Madrid Protocol’ (Gerben, 2024) < The Advantages and Disadvantages of Using the Madrid Protocol (Foreign Companies Filing in U.S.) (gerbenlaw.com)> accessed on 21 June 2024.

24 Vinh Le Quang, ‘9 Disadvantages of the Madrid System for International Trademark Registration’ (LEXOLOGY, 2023) < 9 Disadvantages of the Madrid System for International Trademark Registration - Lexology> accessed 

25 Ibid.

26 Rule 8, Regulations under the Protocol Relating to the Madrid Agreement Concerning International Registration of Marks.

27 Ibid.

28 WIPO note 14.

29 WIPO n 2.

30 WIPO, ‘Contracting Parties to the Madrid Protocol < WIPO Lex> accessed 17 July 2024.

31 See Madrid monitor < WIPO Madrid Monitor> where Kenyan applicants have registered trademarks to be protected in several European nations.

32 Adams and Adams, ‘Brands in Africa: the dos and the don’ts’ < Brands in Africa: the dos and the don’ts - Adams & Adams> accessed 17 July 2024.

33 CIPIT < IP Database (cipit.org)> accessed 7 August 2024.