Expansion of the Madrid System

As of 4 March 2019, Samoa become a member of the Madrid Protocol. Canada’s membership quickly followed suit and its accession to the Madrid Protocol will come into effect on 17 June 2019. These welcome additions to the Madrid System expand its list of members to 104, and a total coverage of 120 countries. The World Intellectual Property Organisation (WIPO), who administer International Registrations, notes that these members represent more than 80% of world trade and that the system keeps expanding as new members join.

The advantages of using the Madid System to file International Registrations are worthy of note, especially when compared with the often burdensome and expensive route of filing overseas applications in multiple countries. International Registrations significantly reduce the administrative and financial burden by allowing applicants to file a single application designating chosen countries with a single set of documents in a single language with a single authority. The fees are also paid directly to WIPO so no multiple currency conversions are involved.

Once filed, WIPO then forwards the application to the national IP Offices of the countries designated in the International application for examination under the local laws. Another benefit of IRs is that they require national Offices to examine the application within 12 or 18 months. Although in most of the national Offices such examination is considerably faster, such a requirement can be a powerful tool in countries which are notorious for taking many years to examine an application filed via national route.

Furthermore, the Madid System simplifies managing registered International trade marks, for example, International Registrations are renewed via a single application to WIPO. Changes of address, name and assignments are also recorded centrally. As of 1 February 2019, it is also possible to divide and merge IRs too.

For any further queries on International Registrations, please contact one of our IP Practitioners in the London office for assistance.