What Is the Difference Between Madrid Agreement and Madrid Protocol?

By Anna Duncan

If you’re a business owner looking to expand your brand internationally, you may have come across the terms Madrid Agreement and Madrid Protocol. Both are international treaties that help businesses register their trademarks in multiple countries.

However, there are some key differences between the two. In this article, we’ll explore those differences and help you determine which treaty is right for your business.

What is the Madrid Agreement?

The Madrid Agreement was established in 1891 and is one of the oldest international treaties related to trademark registration. Under this treaty, businesses can file a single application with their national trademark office and request protection in multiple member countries. The member countries must also be signatories of the agreement.

How does it work?

Under the Madrid Agreement, businesses can file an application with their national trademark office, known as the “Office of Origin.” This application must meet all the requirements of that office and include a list of all the member countries where protection is sought.

Once the Office of Origin approves the application, it sends it to the International Bureau (IB) of the World Intellectual Property Organization (WIPO). The IB then examines the application to ensure it meets all formal requirements and forwards it to each designated member country’s trademark office.

Each designated office has 12-18 months to examine and approve or reject the application based on its own national laws and regulations. If approved, protection is granted for a period of 10 years from the date of registration.

What is the Madrid Protocol?

The Madrid Protocol was established in 1989 as an updated version of the Madrid Agreement. It includes many of the same provisions as its predecessor but also introduces some new features that make it more flexible for businesses.

How does it work?

Under the Madrid Protocol, businesses can file an application with their national trademark office, just like under the Madrid Agreement. However, the application is sent directly to the International Bureau (IB) of WIPO for examination and registration.

Once the IB approves the application, it sends it to each designated member country’s trademark office for examination and approval or rejection based on their own national laws and regulations. This streamlined process can save businesses time and money compared to filing separate applications in each country.

What are the differences between Madrid Agreement and Madrid Protocol?

One of the main differences between the two treaties is that the Madrid Protocol allows businesses to include an unlimited number of member countries in their application, while the Madrid Agreement limits them to a maximum of three.

Another key difference is that under the Madrid Protocol, businesses can file subsequent applications for additional member countries and make changes or renewals to their existing registrations through a single procedure. This is not possible under the Madrid Agreement.

Which one should you choose?

Deciding whether to register your trademark under the Madrid Agreement or Madrid Protocol will depend on your specific business needs. If you only need protection in a few select countries and don’t plan on making changes or renewals, then the Madrid Agreement may be sufficient. However, if you plan on expanding globally and want a more flexible option that allows for future changes, then the Madrid Protocol may be a better fit.

In conclusion, both treaties provide valuable options for businesses seeking international trademark protection. Understanding their differences can help you make an informed decision about which one is right for your business needs.