Written by Anamaria Correal, Trademark Attorney
Recently, on 4 July 2022, the Madrid Protocol has entered into force in Chile, three months after the Chilean Government deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General. By signing the accession of instrument, Chile becomes the 112th member of the Madrid System, which now covers a total of 128 countries.
In addition, Chile’s entrance to the Madrid System makes it the third country from the Pacific Alliance to become a member. While Colombia and Mexico are parties to the Madrid Protocol, notably Peru is not a party to either the Madrid Agreement or the Madrid Protocol.
Moreover, WIPO figures show that Chileans filed more than 32,000 trademark applications in the last decade in 57 different countries. With this in mind, the accession of Chile to the Madrid Protocol is a positive step towards promoting trade cooperation between countries and offering a cost-effective solution for Chilean and worldwide brand owners.
It is acknowledged that this initiative has been supported by the Undersecretariat of International Economic Relations (SUBREI) of the Ministry of Foreign Affairs in order to help business develop their export potential and increase competitiveness.
What is the Madrid System?
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.
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).
Who can use the Madrid Protocol?
To be eligible to file a trademark using the Madrid Protocol, you must have either a registered trademark or an active trademark application in the country of origin. Moreover, this country should be a contracting party to the Madrid Protocol.
Advantages of the Madrid System
Whether you are a start-up or a large enterprise, the Madrid system offers numerous advantages for companies that have or would like to obtain an international presence; for instance:
- Only a single filing is required: permits filing one application with a single office in one language and paying one set of fees in one currency.
- Single centralised system: amendments after registration such as ownership, address, limitation of goods or services could be recorded in the designated contracting parties by a single procedural. In addition, a single submission is sufficient to renew or transfer your international registration.
- Avoid using local agents in each designated member country.
Disadvantages of the Madrid System
Nevertheless, it is important to examine trademarks legislation and laws existing in the designated countries.
- Each country or contracting party has the right to determine whether or not protection of a trademark may be granted since their procedures and criteria are equal to an application not submitted via the Madrid Protocol.
- Your application is dependent on the continuing validity of the home country filing that is the basis of the international registration. E.g. a nationally based application or registration, that is a trademark before the Chilean TMO.
- Your basic mark will be identical to the trademark you are going to register in multiple international jurisdictions under the Madrid System.
Harris Gomez group can help you analysing both the pros and cons on whether to opt for the Madrid Protocol for your business expansion strategy. In addition, our legal team can guide you through the entire process of your trademark registration.
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
