2.6. The Madrid Agreement and Protocol for the International Registration of Marks and Afghan trademark
2.6.2. The Madrid Protocol
The Madrid Protocol is a major step forward in the international registration of trademarks with regards to its predecessor Agreement (the Madrid Agreement). The Protocol established a widespread and “one
301 - Madrid Agreement, Art. 1 (2).
302 - Madrid Agreement, Art. 2.
303 - Marshall A. Leaffer, The New World of International Trademark Law, p. 13-14.
304 - Minde Glenn Browning, International Trademark Law: A Pathfinder and Selected Bibliography, p. 348.
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stop registration system” for registering trademarks internationally. The purpose of the Protocol was to fill the existing gaps within the Madrid Agreement and to obtain the consent of countries that avoided signing or acceding to the Agreement.305 Generally, the Madrid Protocol is a complementary agreement to the Madrid Agreement. However, to some extent, it differs from the Agreement in the following points:
1- According to the Protocol, international registration is based on both application and registration at the national level, while in the Madrid Agreement, it is only based on a national registration, but not national application.
2- For refusal of an application, the Protocol extends the deadline within which the applicant shall be informed thereof.306
3- The Protocol permits member states to charge administrative and filing fees under the international application procedures.
4- Transformation of an international registration into a national application, which is also called
“central attack”,307 is recognized by the Protocol.
5- In addition to French, the application for registration is now available in English and Spanish.
Generally, three types of international application exist:
1. International application entirely administered by the Agreement.
2. International application entirely administered by the Protocol.
3. International application administered by both the Agreement and the Protocol.
With regard to international applications, both the Agreement and the Protocol apply. The application for registration of a trademark is submitted to the International Bureau through the national office of a member state to the Agreement and the Protocol.308
The Madrid Protocol does not benefit nationals or legal entities that have no simultaneous connections with both member states and intergovernmental organizations. Like the Madrid Agreement, these connections are “nationality”, “domicile”, and “effective commercial establishments”.309 It is
305- Marshall A. Leaffer, The New World of International Trademark Law, p. 16. See also Joanna Schmidt, The International Protection of Trademarks After the TRIPS Agreement, p. 204.
306 - The Madrid Protocol states a period of at least one year that can be replaced by 18 months. See the Madrid Protocol, Art.5 (2) (a) (b).
307 - According to the “central attack” notion, “if the national registration or application upon which the international application was based is cancelled, the owner of the international registration may convert the international registration into distinct national application” with the same priority as was granted for the international registration. See Timothy W.
Blakely, Beyond the International Harmonization of Trademark Law: The Community, p. 319. Also see Joanna Schmidt, The International Protection of Trademarks After the TRIPS Agreement, p. 205.
308 - WIPO, intellectual Property Rights Handbook, No 489, p. 289.
309 - Madrid Agreement, Article 2 (1) (i) (ii). Article 2 (1) (i) (ii) of the Protocol provides legal protection in the territory of the contracting party provided that: “(i) where the basic application has been filed with the office of a Contracting State or
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worth mentioning that the Madrid Protocol is also open for intergovernmental organizations to join.
According to Article 2 (1) (ii) of the Agreement, if a country is member of an intergovernmental organization responsible for the registration of a member state’s trademark, the member of the organization will benefit from the provisions of the Protocol. This Article states that: “…that application or registration stands is a national of a State member of that Contracting Organization, or is domiciled, or has a real and effective industrial or commercial establishment, in the territory of the said Contracting Organization”.310
According to Article 2 of the Madrid Protocol, a contracting state and a contracting organization are subject to the provisions of this Protocol when a person, including natural and legal entities, has a connection to a State and an organization. Subsequently the person will be eligible or entitled to use the international registration system. The connecting factors listed in this Article are “nationals”,
“domicile”, and “real and effective industrial and commercial establishment”.311 However, the problem with this Article is the definition of connecting factors and the criteria for such connectors, which are not set out. For instance, when the term “nationals” is used, the question arises as to who is a national.
For example, if a person has dual nationality, which nationality will be valid to benefit from the provision of this Article? Or if a person, when filing an application or registering a trademark at the domestic level, has the nationality of the origin country, but then gives up that nationality. At the same time, there are no clear definitions of “domicile” and “resident”, or whether these terms are interchangeable or not. For instance, if someone resides in a contracting state, would this residence be considered a domicile or not? Similarly, there are no comprehensive definitions and no clear criteria for
“real and effective establishment”, which will cause more ambiguity in the implementation of this Article.
In sum, the Protocol is a relatively new international document and a complementary document to the Madrid Agreement. It proposes new and comprehensive procedures for the international registration of trademarks. Therefore, the main function of the Madrid Protocol is to “harmonize the procedural aspects of international trademark registration”.312 Both the Agreement and the Protocol are affiliated or incorporated within each other so as to provide a better and more transparent atmosphere for the contracting states and contracting intergovernmental organizations in the international application
where the basic registration has been made by such an office, the person in whose name that application or registration stands is a national of that Contracting State, or is domiciled, or has a real and effective industrial or commercial establishment, in the said Contracting State.”
310 - WIPO, The Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
Available at: http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=283483
311 - WIPO, intellectual Property Rights Handbook, No 489, p. 288.
312 - Timothy W. Blakely, Beyond the International Harmonization of Trademark Law: The Community, p. 320.
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and registration of trademarks.313 However, both the Agreement and the Protocol do not touch upon the harmonization of substantive issues pertaining to the international legal protection of trademark, which the Paris Convention deals with.