The Madrid Protocol is an international treaty that simplifies the process of obtaining trademark registration in multiple countries. It allows a trademark owner to file a single application, known as an International Registration, with the World Intellectual Property Organization (WIPO) and designate one or more member countries where they seek protection.
But who enforces the Madrid Protocol? The answer lies in understanding the role of two key players: WIPO and national trademark offices.
WIPO’s role in enforcing the Madrid Protocol
As the administrator of the Madrid System, WIPO plays a crucial role in enforcing the Protocol. It receives and processes International Registrations, publishes them in its Gazette of International Marks, and forwards them to designated national trademark offices for examination and registration.
WIPO also maintains a database of international trademarks, known as the International Register, which provides information on their status and ownership. Trademark owners can use this database to monitor their trademarks and take action against any potential infringement.
National trademark offices’ role in enforcing the Madrid Protocol
National trademark offices are responsible for examining and registering international trademarks within their jurisdiction. They must ensure that these trademarks meet their country’s requirements for registration, including distinctiveness, non-confusion with existing marks, and compliance with local laws.
If a national trademark office finds an International Registration acceptable for protection within its jurisdiction, it will grant protection according to its own laws. This includes publishing the mark in its own official gazette or bulletin.
However, if a national office finds that an international mark does not meet its requirements for registration or conflicts with existing rights, it can refuse protection within its jurisdiction. In this case, WIPO will inform the trademark owner who can then decide whether to pursue registration through national applications or appeal WIPO’s decision.
- Enforcement against infringers:
Neither WIPO nor national trademark offices have the power to enforce trademark rights against infringers. This responsibility lies with trademark owners themselves, who must take legal action in each country where they seek protection.
Trademark owners can enforce their rights by filing infringement actions in national courts or administrative bodies. They can also use alternative dispute resolution mechanisms such as mediation or arbitration, which can be less costly and time-consuming than litigation.
Conclusion
In summary, the Madrid Protocol is enforced through a collaborative effort between WIPO and national trademark offices. WIPO administers the Protocol and maintains the International Register, while national offices examine and register international trademarks within their jurisdiction. Trademark owners must take responsibility for enforcing their rights against infringers by pursuing legal action in each country where they seek protection.