Who may apply
Nationals and residents of the member countries are entitled to the privileges of the Madrid Agreement / Protocol. Non-residents also qualify if they have an effective and real establishment in one of the countries party to the Agreement / Protocol.
The Madrid Agreement and the Protocol of Madrid cover around 100 countries. On request we can give you a list of this countries.
The protection afforded by an international registration is determined by the national law of the member state concerned. Registration can therefore be refused per country.
For its validity an international registration is dependent upon its national registration during the first 5 years of its existence. A successful cancellation action against the home registration, initiated within that period, results in cancellation ex officio of the international registration. After that period the international registration can only be attacked country-wise, no longer as a whole.
Priority is ex officio recorded if the international registration is filed within 6 months from the home registration.
Some of the countries adhering to the Madrid Agreement / Protocol have the possibility of an administrative opposition before the national Trade Marks authority. An opposition generally have to be filed within a term of some months after the publication of the international registration, failing which only the common Courts are competent.
An international registration has a validity of 10 years, renewable for like periods. There is a 6 month grace period against payment of a 50% fine.
Licences can be recorded against the international registration.
The registration may be assigned in whole or partly or for a part of the countries and/or goods or services. Assignment can only be unto a qualified person or body (see: Who may apply).
Most countries party to the Madrid Agreement / Protocol require normal use by the registered proprietor or a (recorded) licensee to maintain validity of the mark. We advise to retain proof of use for each country (invoices, packagings, dated advertisements etc.).
An international registration obtained in respect of certain countries, may at any time be extended to other countries adhering to the Madrid Agreement / Protocol. This extension is also possible after refusal of a registration.
Inclusion of national rights (substitution)
If an international registration is obtained in respect of a country where the mark was already registered in the name of the same owner, the priority of the national registration may be included in the international registration. The national registration may then be allowed to lapse.
The international classification of Nice of goods and services applies.