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The Madrid System for the registration of trademarks as an instrument of globalization

Dec. 15, 2018

The main purpose of the creation and registration of a trademark is its use for the individualization,
isolation of а product. If the designation is registered, but at the same time it is not used for its intended
purpose, then it will not have any value. An active promotion and use of the trademark leads to the
formation of the associations “the trademark – the product,” “the trademark – the manufacturer,” “the
trademark – the quality” at a consumer. Thanks to these associations, the buyer makes informed choices
about the products, and he recommends them to other consumers, what increases consumer demand. The
positive results of such trend are: a production growth and an expansion of the territory, where the
products are sold. At this stage, the right holder of the designation has two key questions: “How to
prevent the illegal use of the trademark?” and “How to protect the means of individualization across
several countries?”
The registration of trademarks in different countries
The Madrid System for the international registration of trademarks was created in 1891. The fundamental
legal acts ensuring the functioning of the System are: The Madrid Agreement Concerning the
International Registration of Marks of 1891 and the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks of 1989. The International Bureau of the World
Intellectual Property Organization (WIPO) performs the administration of the Madrid System.
To file an application for the registration of a trademark using the Madrid System, you need:
― To have the designation, which has been registered or filed for the registration with the national Office
of the Madrid Union member country (the Office of Origin), which the applicant is connected with. It is
expressed through a genuine and valid industrial or commercial enterprise, residence or citizenship.
― To file an application to the International Bureau through the Office of Origin, where the date of
receipt of the international application, the identity of the claimed mark to the designation in the basic
application or registration, as well as the identity of the claimed classes of products and services to the
ones specified previously are subsequently certified.
― To specify in the application an image of the mark and the list of products and services, classified by
the ICGS.
― To enumerate the Madrid System member countries, where it is planned to obtain legal protection.
― To pay a fee in the fixed amount. The amount of the fee depends on the number of the specified
countries, the number of the classes of the products and services enumerated in the application – the
amount will increase, if more than three classes, as well as the countries of origin of the applicant, are
claimed – the amount of the fee may be reduced by 10%, provided that the state is recognized by the
United Nations as the least developed one.
After checking the application for compliance with the requirements, as well as the confirmation of the
payment of the fee in the fixed amount, the information about the trademark shall be placed into the
International Register and be published in the Bulletin. The International Bureau shall notify then the
Union member countries, where the registration is sought. The national Offices of these states shall carry
shall out an examination and make a decision on the international application in exactly the same way as
if the application is filed directly.
The international registration shall be valid during 10 years, further it is allowed to extend protection for
the periods of 10 years subject to the payment of the required fees.

The benefits of the registration of trademarks using the Madrid System
Using the Madrid System to file an international application, the holder of the trademark gets a number of
advantages. Firstly, a single application is filed in one of three languages: English, Spanish or French.
Secondly, a total fee shall be paid to the International Bureau. Thirdly, the period of examination of the
application is reduced compared with the period of consideration directly within each Office. And also
the procedures for changing the data about the right holder and for extending the period of protection of
the registered designation are simplified.
The Madrid System for the registration of trademarks as an instrument of globalization
In a rapidly developing market relations the use of a trademark is the best way to increase demand and to
improve the company's competitiveness. The distinctive feature of the modern world economy is the
absence of obstacles to the movement of products around the world. Previously, it has been difficult to
sell and buy on the territory of different states; also it has been extremely costly. Today, trading on the
Internet and the numerous delivery methods make it possible to order and receive the product anywhere.
In the circumstances, the simultaneous registration of the trademark in several countries is justified, and it
will allow protecting the designation and products against the illegal actions of the law violators.
The Madrid System suggests that the right holders should take advantage of the Union of 102 members
representing the interests of 118 countries. According to the WIPO data: “These members account for
more than 80% of the world trade, and it can grow as the number of the Union members increases.” 1
About 1.3 million trademarks have been registered by filing an international application.
The person registering the trademark under the Madrid System gets a resource to ensure protection of the
designation in several jurisdictions at once. As the Nestlé representative notes: “It is economically
advantageous, it requires minimal bureaucratic costs and it has a minimum of administrative barriers; it
does not require powers of attorney and agents.” 2 Thanks to the use of the System, the procedure for
extending the period of protection of trademarks is simplified. If desired, the right holder is entitled to
refuse from the prolongation of the registration in a number of countries or, conversely, to expand the list
of the states, in which the designation is registered.
In conclusion, it is worth noting that in the process of the global economic integration, the Madrid System
for the registration of trademarks is a modern tool that allows the right holder, who has entered the world
market, to ensure timely and effective protection of his own means of individualization.

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Author of article

Sergey Zuykov

Sergey Zuykov

Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney