- Introduction
The Madrid Protocol is an international treaty that facilitates the registration and management of trademarks across multiple countries through a single application. It simplifies the process for businesses and individuals seeking protection of their marks globally. The Protocol is open to countries and intergovernmental organizations, providing greater flexibility than its predecessor, the Madrid Agreement. By centralizing administrative tasks via the International Bureau of WIPO, it reduces procedural complexity and costs. This legal note outlines key aspects of the Madrid Protocol, including registration, territorial scope, effects, and fee structure.
- The Madrid Protocol and Ethiopian Implications
The salient feature of Madrid Protocol is that it enables a single international application for a trademark, based on a basic application/registration in the applicant’s Office of Origin (national or regional). According to the Madrid Protocol, WIPO examines formalities, registers, and notifies designated Contracting Parties (member states). Also, a publication in the WIPO Gazette satisfies publicity requirements. Generally, registration and renewals are for 10‑year periods.
- Eligibility and Filing
- Eligibility: The applicant shall have either nationality, domicile, or a real and effective industrial or commercial establishment in a Contracting Party/Organization to be eligible for international application.
- Filing: The international application is filed through the IP office where the basic application or registration was made, known as the Office of origin, which forwards it to WIPO’s International Bureau (IB). The Office of origin certifies that the international application reflects the details of the basic application or registration, including its number, filing date, and, in the case of registration, the date and number of the original application.
- Contents of Application: The application must list the goods and/or services for protection, ideally classified under the Nice Classification. If not, the IB assigns classifications; its decision prevails in case of disagreement. Any claim to color as a distinctive feature must be clearly stated, with the specific color(s) identified and color copies submitted as required.
- Date: The registration date is generally the date the Office of origin receives the application, provided it reaches the IB within two months; otherwise, the IB’s receipt date is used. Upon registration, the IB notifies the designated IP offices of the Contracting Parties and publishes the registration in the WIPO Gazette of International Marks, which satisfies publicity requirements.
- Territorial Effect of the Madrid Protocol
It should be noted that protection under international protection does not provide automatic protection worldwide and to get international protection the applicant must request it. An exception is the Office of origin, where protection is already secured via the basic application or registration.
- Initial Request for Extension: At the time of filing the international application, the applicant must explicitly designate the Contracting Parties where protection is sought.
- Subsequent Request for Territorial Extension (Subsequent Designation): The Madrid Protocol also allows for territorial extension after the international registration has been granted. This process is known as a subsequent designation. It provides flexibility to trademark holders, enabling them to expand protection into additional countries later on, as business needs evolve
- Effects of International Registration under Madrid Protocol
- Equal Protection as National Registration: Once an international trademark registration (or a subsequent designation) is recorded, the mark enjoys the same legal protection in each designated country as if it had been filed directly with that country’s trademark office. This protection is effective from the date of the international registration, assuming no refusal is issued by the national IP office. If a refusal is issued but later withdrawn, the registration takes effect as though it had been accepted from the start.
- Priority Right under the Paris Convention: International trademark registrations filed under the Madrid Protocol automatically benefit from the priority right granted by the Paris Convention. This means that if the international application is filed within six months of the basic national/regional application, the applicant can claim the same priority date in all designated Contracting Parties.
- Replacement of National or Regional Registration: Under Article 4bis of the Protocol, an international registration can replace an existing national or regional trademark registration, provided that: (a) The international registration must designate the same country or region as the earlier national/regional registration; (b) The goods and/or services covered must be identical or included within the scope of the national or regional registration; (c) The international registration must take effect after the national or regional one was granted.
- Refusal and Invalidation of International Registration
- Right to Refuse Protection: Each Contracting Party has the sovereign right to refuse protection to a trademark that has been internationally registered, provided its national laws permit such refusal. However, this refusal must be based on grounds that would apply equally to a national application under the Paris Convention. Refusals cannot be based solely on formal limitations, such as the number of classes or scope of goods/services allowed by local law.
- Time Limits for Refusal Notification: Trademark offices must notify the International Bureau (WIPO) of any refusal of protection within strict time frames: (a) Standard Time Limit: A refusal must be communicated within one year from the date the office receives notification of the international registration or designation; (b) Ended Time Limit (18 months): A country can formally declare an extension of this period to 18 months. Such declarations may be made upon joining the Protocol or at a later time. If declared later, they take effect three months after receipt by WIPO, unless a future date is specified; (c) Refusal Based on Opposition (Post-18 Months): If protection can be refused due to opposition proceedings, a refusal can still be issued after 18 months, but only if: The national office informs WIPO before the 18-month period ends that opposition may be filed later, and The actual refusal is issued within seven months from the start of the opposition period, or within one month after the opposition period ends, whichever comes first. After ten years, the procedures outlined above may be revised by unanimous decision of the Contracting Parties.
- Notification to the Holder: Once a refusal is issued by a national office, the International Bureau must promptly inform the trademark holder so that the holder can defend or respond to the refusal directly with the office concerned. Additionally, if a country notifies WIPO in advance about potential future opposition (under 2(c)(i)), the Bureau must inform the holder of this as well.
- Access to Grounds for Refusal: Any interested party, including the holder or third parties, may request the reasons behind a refusal directly from the International Bureau. This helps ensure transparency in the refusal process.
- Consequences of Failing to Notify Refusal: If a national office fails to notify a refusal within the applicable deadline, it loses the right to deny protection for that international registration
- Invalidation of Protection: If protection for an international trademark is later invalidated in a Contracting Party (for example, due to a court decision or administrative ruling), this invalidation must be communicated to WIPO. However, the holder must be given the opportunity to defend their rights before the invalidation takes effect.
- Period of validity of International Registration: Registration of a mark at the International Bureau is effected for ten years, with the possibility of renewal under the conditions specified in Article 7 of the protocol. Upon expiry of a period of five years from the date of the international registration, such registration shall become independent of the basic application or the registration resulting therefrom, or of the basic registration
- Renewal of International Registration: Under the Madrid Protocol
International trademark registrations are renewable for successive periods of 10 years. Renewal is a procedural act that requires only the payment of the basic fee, along with any supplementary and complementary fees as outlined in Article 8(2). Importantly, the act of renewal cannot alter the substance of the registration. If the renewal deadline is missed, the Protocol offers a six-month grace period, during which the holder may still renew the registration upon payment of a surcharge.
- Fees for International Application and Registration:
The Protocol establishes a two-tier fee system under Article 8 fees may be charged at both the national level (by the Office of origin) and the international level (by the International Bureau of WIPO). At the national level, the Office of origin is allowed to set and retain its own fees for processing the application or renewal. At the international level, three types of fees are collected: (a) A basic fee, applicable to all applications; (b) A supplementary fee, charged for each class of goods or services beyond three; and (c) A complementary fee, payable for each territorial extension. In certain cases, where the classification of goods or services is disputed or unclear, the applicant is granted additional time (as per the Regulations) to either pay the supplementary fee or amend the classification.
- Ethiopian Implication of Madrid Protocol
Ethiopia’s accession to the Madrid Protocol represents a major advancement in aligning with global intellectual property (IP) systems. To fully benefit, several foundational improvements are necessary. These include preparing the IP office to act as the Office of Origin for international applications, establishing clear examination and opposition procedures (including 18-month refusal declarations), determining fee structures and representation rules, and enabling digital services for filings and tracking.
The implications are twofold. For Ethiopian brand owners, the Protocol enables cost-effective international trademark protection and market expansion. For foreign rights holders, it provides streamlined access to protection in Ethiopia, likely increasing oppositions and enforcement activity under Paris Convention principles (e.g., well-known marks, unfair competition). Related frameworks for patents and designs, as well as compliance with consumer protection laws, will also play a role.
Implementation steps should include monitoring legislative updates, ensuring internal readiness (forms, templates, and procedures), conducting IP portfolio audits, setting up watching and opposition strategies, training staff on Madrid and Paris timelines, and informing clients of new filing options and obligations.
- Conclusion
Ethiopia’s accession to the Madrid Protocol is a transformational and historic step. However, it also necessitates substantial revisions to existing intellectual property laws and regulations, as well as institutional and systemic reforms, to ensure proper alignment with international standards.
Disclaimer: This legal update is for informational purposes only and does not constitute or replace legal advice. Million Alemu and partners Legal Services assumes no responsibility for any actions taken based on the information contained herein.
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