Written by Anamaria Correal, Trademark Attorney
We often speak with clients to reinforce the importance of having good practices in place to protect their intellectual property. For many companies and businesses, their IP will often be the most valuable thing that they own and develop, and will often even be the basis of their entire business – this could be information, methods, or even just the image and brand of the company itself.
As your business starts to grow and expand internationally, it is important to contemplate and plan to protect your trademarks globally. However, Trademarks by nature are territorial, which means that they must be filed in each country where protection is sought. With this being said, the Madrid System is a convenient option for registering trademarks overseas, allowing the protection of a trademark in a large number of countries through a single application. This has particular implications for businesses operating between Australia, Chile and other jurisdictions, as from next year the Madrid System will operate in Chile.
The Madrid System
The Madrid System is the primary system for the international registration of trademarks. Its main purpose is to simplify the international trademark procedure and reduce the costs of registering a trademark in different countries. The Madrid System is governed by two treaties, The Madrid Agreement (1891) and The Madrid Protocol (1989). The two treaties are independent of each other, and the State parties can adhere to either or both of them. They are administered by the International Bureau of the World Intellectual Property Organisation (WIPO).
The Madrid Protocol
The Madrid Protocol is continually expanding; While it is still a mechanism unknown to many, it is an efficient way to manage international trademarks. The Madrid Protocol has multiple advantages including but not limited to allowing trademarks owners to cost-effectively register trademarks in multiple countries and jurisdictions that are contracting parties to the Protocol; permits filing one application with a single office in one language and paying one set of fees in one currency. Moreover, the renewal process is simplified as there is only one registration to renew. In addition, amendments after registration such as ownership, address, limitation of goods or services could be recorded in the designated contracting parties by a single procedural.
Nevertheless, each country or contracting party has the right to determine whether or not the protection of a trademark may be granted since their procedures and criteria are equal to an application not submitted via the Madrid Protocol.
Which countries are members?
The Madrid Union has currently 109 member countries and regions, representing 125 countries in total. While not every country is a member of the Madrid System, various States are taking all the necessary steps to adhere to the Madrid System. For instance, Chile is approaching the implementation of the Madrid Protocol, with the discussion of the draft Agreement having begun in January 2021. Following this, on the 9th of March 2021, the Senate Foreign Relations Committee approved, with five votes in favour, the Draft Agreement that approves the Madrid Protocol concerning with the International Registration of Trade Marks (Bol. No. 13929-10). In addition, on the 19th of May 2021, Chile approved a bill accepting the Madrid Protocol, which is expected to be in force in March 2022. Once it joins, it will become the sixth Latin American member of the Global Trademark System, along with Colombia, Mexico, Brazil, Cuba and Trinidad &Tobago.
Conclusion
The Madrid System facilitates the expansion of your global trademark portfolio. While it is not possible to use the Madrid System to protect a trademark in countries that are not part of the Protocol, even in non-party countries steps to adhere to the Madrid System have been taken, such as in Chile.
If you have questions about whether the Madrid System will be suitable for your business, get in touch with our expert IP team today.
Harris Gomez Group opened its doors in 1997 as an Australian legal and commercial firm. In 2001, we expanded our practice to the international market with the establishment of our office in Santiago, Chile. This international expansion meant we could provide an essential bridge for Australian companies with interests and activities in Latin America, and in so doing, became the first Australian law firm with an office in Latin America.
We provide innovative technology and resources businesses with legal and commercial expertise to realise their global potential. Our goal is to see innovative businesses establish and thrive in the global market. We are proud members of Austmine.
To better understand how we can support your management team in the Region, please contact contact@hgomezgroup.com
