The international registration of trade marks: accession to the Madrid Protocol

The international registration of trade marks: accession to the Madrid Protocol

At present, an Australian company or individual seeking to register a trade mark overseas must (with some exceptions such as the European Union) register the trade mark separately in each country where trade mark protection is required.

The Madrid Protocol

The Madrid Protocol is an international treaty which simplifies the procedure for the international registration of trade marks. The Protocol was initially set up at a diplomatic conference in Madrid in June, 1989 and came into operation on 1 April 1996.

To date 48 countries are members of the Protocol and that number is increasing year by year. The treaty has the effect of allowing any person based in one of the member countries to extend a trade mark application (or registration) to the other member countries. In cases where a country is not a member of the Protocol, the trade mark must be applied for and registered separately.

Action by Australia to Accede to Protocol

At this stage Australia has not joined the Madrid Protocol because the treaty making process has not yet concluded. However, this process is now at a mature stage and the Government's final decision to accede is expected by early December 2000. IP Australia has been working towards the eventual accession of Australia to the Protocol. As part of that process IP Australia has undertaken a consultative process including public seminars and meetings with various interest groups.

Strong support and interest in the Protocol has been apparent in the course of these consultative activities. Some concerns regarding the timing and impact of Australia's accession to the Protocol have also been raised and the process of consultation is on-going.

It is proposed that Australia's accession to the Madrid Protocol will take place as soon as possible after the current Parliamentary sittings period ends on 5 December 2000. The Protocol would enter into force in Australia three months after accession. Taking into account the changes to the Trade Marks Office's business processes, it is expected that the Protocol could be fully operational in Australia possibly as early as April or May in 2001.

Advantages and Possible Disadvantages

The principle advantage of accession to the Madrid Protocol is that it provides a simplified system for the registration and maintenance of trade marks in a significant number of countries. In effect, a single application for a trade mark can be extended from the applicant's home country to any one or more of the other countries that are members of the Protocol.

The maintenance of trade mark registrations under the Protocol – renewals, changes of name and address, etc – will also be simplified. It is anticipated that trade mark applications under the Protocol will result in cost savings to applicants. Amongst the concerns raised in relation to the Protocol is the impact on workloads in the Australian Trade Marks Office. Increased filings for trade mark applications under the Protocol will place further pressure on the Trade Marks Office to examine and process the already high volume of trade mark applications presently being received by the Office. This may result in delays in the progress of trade mark applications in Australia. There are also concerns that the quality of examination may suffer as a consequence of the increased workload.

On balance, we believe that the Protocol will benefit Australian businesses and individual traders. For that reason Davies Collison Cave is committed to providing clients with detailed information and advice as to the benefits available under the Protocol and to assist clients in utilising the Protocol as fully as possible.

Members of the Madrid Protocol

As at November 2000

» Antigua and Barbuda
» Armenia
» Austria*
» Belgium*
» Bhutan
» China
» Cuba
» Czech Republic
» Democratic People's Republic of Korea
» Denmark*
» Estonia
» Finland*
» France*
» Georgia
» Germany*
» Greece*
» Hungary
» Iceland
» Italy*
» Japan
» Kenya
» Latvia
» Lesotho
» Liechtenstein
» Luxembourg*
» Monaco
» Morocco
» Mozambique
» Netherlands*
» Norway
» Poland
» Portugal*
» Republic of Moldova
» Russian Federation
» Sierra Leone
» Singapore
» Slovakia
» Slovenia
» Spain*
» Swaziland
» Sweden*
» Switzerland
» Turkey
» Turkmenistan
» United Kingdom*
» Yugoslavia

* Also a member of the European Union