Advantages of the Madrid System
The Madrid System allows for a centralized management of all registered trademarks through the WIPO IP PORTAL. The owner of the trademarks registered via the Madrid process will be able to manage their live trademarks through a single process. This makes renewing trademarks and keeping owner information up to date an easy and straightforward matter.
All the processes through WIPO will be carried out in one single language, regardless of what and how many countries the trademark is extended to.
The initial costs for filing the trademark application are fixed. The costs to initiate a Madrid application process can be seen through the WIPO Madrid Fee Calculator. Therefore, before proceeding you will know what are the administrative fees to file the trademark. Once the trademarks are registered, all fees for future renewals of the trademarks will also be clear.
Many countries have extremely long registration processes. In many countries the trademark offices have considerable backlogs. It can be a number of years until the trademark offices finally refuse or accept a trademark for registration.
On the other hand, through the Madrid system the receiving countries have a maximum of 18 months to notify possible refusals. If no notifications are received after this 18-month period the international system will consider the applications to be automatically registered.
Drawbacks of the Madrid System
If the base trademark is canceled within the first five years, all subsequent registrations may be lost. This is what we referred to before and is known as a central attack.
If a central attack is received the extensions may be transformed into local trademarks under certain circumstances. The transformation of Madrid protocol trademarks into local applications will increase costs. Local representatives will be needed for each local process.
The immense majority of countries follow the Nice class system for the description of goods and services of a trademark. Some countries do not allow for general descriptions and will require products or services to be specified.
A typical example of this is what happens with trademarks for software. The description of a product as “software” will be accepted in the European Union and in a majority of countries. However, in the United States or Canada the nature of the software will need to be specified.
Initial refusals may be received if a description of products needs to be limited. If this happens the response will need to be lodged by a local trademark attorney. Although these issues are simple to overcome, having to rely on local agents will increase the costs of the process.
Local attorneys will always be needed if the trademarks receive initial refusals. The response to such refusals will need to be done by local trademark agents. In this case, searching for representatives may be difficult and will increase the costs initially considered.
Restriction to future trademark transfers. Transfers of trademarks registered through Madrid can only be done between nationals of countries that are members to the system.
Many countries to which Madrid Protocol trademarks are extended have considerable administrative lags. Some countries also have less than decent IT infrastructure that causes failure to property communicate provisional refusals to the trademark applicants. These cases of mismanagement many times cause unclear situations that end up in litigation.
The system rules establish that if a trademark is not refused within an 18 month period it will automatically be registered by the Madrid System. However, the local trademark office may not recognize this. These situations end up requiring the assistance of local attorneys.