International System for Trade Marks
The Madrid system is the primary international system for facilitating the registration of trade marks in multiple jurisdictions around the world. Its legal basis is the multilateral treaty Madrid Agreement of 1891, as well as the Protocol Relating to the Madrid Agreement (1989). The Madrid system provides a centrally administered system of obtaining a bundle of trademark registrations in separate jurisdictions. The Madrid Protocol system provides for the international registration of trademarks by way of one application that can cover more than one country. The opportunity of having a single registration to cover a wide range of countries gives advantages, both in terms of portfolio management and cost savings, as opposed to a portfolio of independent national registrations. Adherence to the protocol includes membership of the Madrid Union. As of April 2016 there are 97 members:
Madrid Agreement members
OAPI, Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Bulgaria, Cambodia, China, Colombia, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Egypt, Estonia, Eswatini (formerly Swaziland), European Union, Finland, France, Gambia, Georgia, Germany, Ghana, Greece, Hungary, Iceland, India, Iran (Islamic Republic of), Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Lao People’s Democratic Republic, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Mexico, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, New Zealand, Norway, Oman, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Rwanda, San Marino, Sao Tome and Principe, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, The former Yugoslav Republic of Macedonia, Tunisia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam, Zambia, Zimbabwe.
There is no such thing as an International Trademark
Various international agreements make it possible to file a single logo registration in more than one country:
BOIP (Belgium, Luxembourg and the Netherlands)
Community Trademark (European Union)
Madrid Agreement (97 Contracting Parties)
OAPI (17 French speaking member states in Africa)
ARIPO (19 English speaking member states in Africa)
You should file a trademark in the countries in which you offer your products or services and you should also consider filing in countries where you intend to use the mark in the future, but some countries do have use requirements. It is highly recommended that you contact trade mark attorneys to assist you with filing and registering your trade mark. Trade mark attorneys will not only advise you on the best way to ensure that your trade marks are properly protected, but will also deal with all the formalities on your behalf, making the process as effective as possible.
Madrid Trade Marks in Africa
Only nine of the thirty eight African members have enforced the Madrid Protocol through appropriate amendments to their national trade mark legislation, together with the implementation of enabling regulations, namely Botswana, Gambia, Ghana, Kenya, Liberia, Malawi, Mozambique, Namibia and Zimbabwe.
Even in these nine countries, practical issues exist such as the recognition of the national laws of each country, the enforceability of the International registration in those countries and the effect of national common law rights. Procedural issues include adhering to the system’s strict processing timelines, irregular publication of Trade Mark Journals, late examination or non-examination and issues related to record keeping. At this stage, it is recommended that clients pursue national trade mark applications in each African country of interest. We remain at your disposal to render advice as to which countries may enjoy a successful registration using the Madrid System.