1. Definition and Purpose
It allows natural or juridical persons of member countries to file international trademark registrations through their respective local trademark offices (acting as the office of origin), which then designate other member countries to be covered by the registration. Its main objectives are to facilitate the securing of protection for trademarks internationally and to make the management of registered marks easier across different countries.
2. Advantages of the System
The Madrid Protocol provides a centralized, one-stop solution for registering and managing marks worldwide. It allows a trademark owner to:
- File just one application.
- Use one language (English, French, or Spanish).
- Pay one set of fees to protect their mark across the territories of up to 97 member states.
3. Requirements for Registration
To use the system, the mark must already be registered with the trademark office of the Contracting Party (the office of origin) with which the applicant has a necessary connection through establishment, domicile, or nationality. The international application form must contain:
- Name, address, and contact details of the applicant.
- The Designated Contracting Parties where protection is sought.
- A reproduction of the mark.
- An indication of the goods and services for which the registration is sought.
4. Rights Conferred
An international registration is equivalent to a bundle of national registrations. If the Intellectual Property Office of the Philippines (IPOPHL) or another designated office does not notify the International Bureau of a refusal, the protection of the mark in that country is the same as if it had been registered directly with them on the date of the international registration.
5. Relationship with the Philippine Intellectual Property (IP) Code
The Supreme Court has clarified that there is no conflict between the Madrid Protocol and the Philippine IP Code.
- The method of registration through the World Intellectual Property Organization (WIPO) under the Madrid Protocol is distinct and separate from local registration through the IPOPHL.
- The Madrid Protocol does not amend or modify the IP Code regarding how trademark rights are acquired. International applications are still examined according to the relevant national law.
- The IPOPHL will only grant protection to an internationally filed mark if it meets the local registration requirements. Furthermore, local representation (a resident agent) is still required if the IPOPHL refuses registration, as well as for the submission of the mandatory Declaration of Actual Use.
6. Term of Protection
An international registration under the Madrid Protocol is valid for a period of ten (10) years from the date of registration. It may be renewed for further periods of 10 years upon the payment of the prescribed fees.