The Madrid Agreement and the Madrid Protocol are independent, parallel treaties, with separate, but overlapping, regulations and memberships. There is a certain difference between two these treaties in the following aspects:
1 Basic of an international registration:
The Madrid Agreement requires that an international application be based on a home country registration. This restriction is felt to disadvantage the trademark owners because it takes a certain period of time to obtain a registration in the home country. Under the Protocol, the applicant may base its application for international registration on an application filed with the home country’s trademark office or a registration granted by that office 28. This change will also allow those who apply under the Protocol to take advantage of the six-month priority period of the Paris Convention.
2 Filing language
Under the Agreement, the working language is French and all applications filed
under the Agreement must be in French. However, under the Protocol, the
Office of Origin may require applications made under the Protocol to be filed in
English, French or Spanish or it may permit the applicant to choose one of the
3 Safeguard clause
The “safeguard clause” as regulated in the Article 9sexies of the Protocol provides the answer to the question of which treaty will be binding between contracting parties to both the Agreement and the Protocol. This is one of the main new features of the Protocol in comparison to the Agreement.
4 Remedy to central attack
Under the Madrid Agreement, “central attack” may occur during the first five years of an international registration as follows: Where the basic application or basic registration has its scope of protection limited or eliminated during that time, under the Agreement, the international extension registration were similarly limited or eliminated and there was no recourse for the owner of the international registration.
The Madrid Agreement’s “central attach” provisions are considered unfair by many trademark owners because many of the grounds available to reject, oppose or move to cancel a domestic registration are not recognized in other countries.
However, under the Protocol, when an international registration is canceled during its first five years due to failure of the basic application or basic registration, the international registration may be transformed into national (or regional) applications in each of the Contracting Parties in which the international registration had effect, maintaining the priority date of the international registration.
This possibility does not exist under the Madrid Agreement.
5 Time limit for refusal period
The time limit for a designated country to refuse an extension of protection under the Agreement is 12 months that is inadequate given the relatively extensive and lengthy examination process followed in many countries. However, under the Protocol, each Contracting Party may elect a period of 18 months to grant or refuse protection to the mark or notify the holder of the possibility of refusal.
A registration under the Agreement lasts for 20 years before it must be renewed, while under the Protocol a registration lasts for 10 years before it must be renewed. The shorter time period should eliminate deadwood on the International Register.
7 Fee structure.
Under the Agreement, the applicant pays a fixed fee for each designated Contracting Party. However, under the Protocol, there may be either a fixed fee or the Contracting Party may set up its own “individual” fee system in which the national office may charge the same fee for any extension of an international registration in its territory that it would have charged for a national ten-year registration 37. This change means that designations under the Protocol will likely be more expensive than those under the Agreement, though still less than obtaining registration from individual countries, especially if the user does not incur local agent’s charges.
8 Flexibility for choice of Office of Origin
Under the Agreement, an applicant has less choice over the trademark office in which it must file: It may only file in a contracting country to the Agreement in which it has “a real and effective industrial or commercial establishment”. Only if it has so such establishment may it file in the Office in the country of its domicile if that country is party to the Agreement or, if it has no domicile in such a country, then it may file in a country party to the Agreement where it is a national.
However, under the Protocol, the applicant may choose its Office of Origin bases on establishment, domicile or origin.
In the past five years, 19 new members have joined the Madrid Protocol – most recently Madagascar, on January 28, 2008.
Resulted from the fact that membership of the Protocol expands to the intergovernmental organization 40 , the accession of European Union to the Madrid system as from October 1st, 2004 open a big chance for the trademark holders of contracting parties to the Protocol to extent protection of their trademark in European countries. This ability is not provided to contracting parties only to the Madrid Agreement.