The Madrid System, so called Madrid Protocol, is an international system that provides trademark registration in contracting states with one single application.
Its legal basis is the multilateral treaty “Madrid Agreement Concerning the International Registration of Marks”, as well as the Protocol Relating to the Madrid Agreement.
An application for international registration may be filed only by a natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or the Madrid Protocol. Therefore any person or legal entity which does not remain in this system or does not fit with the above description has no right to file an application.
Main Features of the System
A mark may be the subject of an international application only if it has already been registered or applied in National Office of a contracting party. This Office is referred to as the Origin Office. An international application must be presented to the International Bureau (WIPO) through the Origin Office (i.e. Turkish PTO). An international application which is served directly to the WIPO will not be considered valid and will be returned to the sender.
As Turkey is a party only to the Protocol but not the Agreement, only other contracting parties which are also party to the Protocol may be designated for the international application.
Contracting party who received the application examines it by his own legislation and must notify any provisional refusal to the International Bureau within 18 months at most according to the Protocol.
The provisional refusal is recorded in the International Register and published in the Gazette, and a copy thereof is transmitted to the holder of the international registration.
Advantages of the System
After registering a mark, or filing an application for registration, at the Origin Office, the applicant has only to file one application, in one language and pay one fee instead of filing separately in the trademark Offices of the various contracting parties in different languages and paying a separate fee in each office.
Moreover changes subsequent to registration, such as changes in the name or address of the holder or in ownership or limitations of the list of goods and services may be recorded with effect in designated contracting parties through a single and simple procedural step, and by the payment of a single fee.
In addition to that, there will be only one expiry date and only one registration to renew.
A further important advantage of the system is that if the applicant receives a provisional refusal from a contracting party, this will not cease the other applications and international application is maintained in the remaining contracting states.
Dependence on the Basic Registration
For a period of five years from the date of its registration, international registrations remain dependent on the mark registered or applied for in the origin office.
If the basic registration ceases to have effect for any reason within this five year period, the international registration will no longer be protected.