Thursday, 14 April marked the 125th anniversary of the Madrid International Trademark System

Since it was first adopted in Madrid in 1891 with the aim of facilitating the internationalization of trademarks in a world that had already embarked on the path of globalization, the system has continued to adapt and grow.

The system currently covers 113 countries, which gives an idea as to its scale, since it is possible to file trademarks using this system in around half of the world’s jurisdictions.

The system has seen changes and improvements, and it has been made more flexible in order to pursue its commitment to internationalization.

Among other milestones, in the past few decades and through the Madrid Protocol, English and Spanish have been added to French as official languages. We have seen greater flexibility in the setting of time limits, the payment of fees and in the conditions of accession, and we have also seen filings admitted on the basis of trademark applications rather than registrations.

Thus, a great many countries, some of major economic, commercial and strategic importance and also important culturally and in terms of population size, have been able to benefit from the advantages the system holds for their country as well as for domestic and foreign investors. We may cite examples such as the USA, Mexico or Colombia, but there are of course other countries from different geographic, economic and cultural spheres, including countries in Europe, that have been able to find their place in the Madrid International Trademark System through the Protocol.

The administration of the system by WIPO, which has itself continuously sought to adapt and improve, has without doubt contributed to the system’s progress.

There are certainly challenges ahead for the system, such as its increased expansion to Latin American countries and to countries in other regions of the world, but throughout the past 125 years it has shown a capacity to adapt in a period in which the world has seen the biggest changes in its history, and therefore that capacity augurs a bright future.

Elzaburu would like to offer its congratulations to an international system which, we are proud to say, was born in Spain, itself a symbol of universality. Our congratulations naturally extend to WIPO, without whose continuous efforts the system would not have consolidated and grown as it continues to do.

Author: Juan Miguel Sainz de Marles

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Algeria joins the Madrid Protocol

Algeria deposited its instrument of accession to the Madrid Protocol on 31 July 2015, and the Protocol is to enter into force for Algeria on 31 October 2015.

Algeria was the only one of the 95 current member States of the Madrid System that was a party to the Madrid Agreement alone.

The Madrid Agreement is much less streamlined and up to date than the Protocol. For instance, international filings have to be based on a granted trademark registration, and certain procedures can only be carried out through the home Office. Not only do these sticking points give rise to delays and complications, but the Agreement does not allow the designation of States that are parties only to the Protocol, which include such major jurisdictions as the OHIM, JPO, and USPTO. This has no doubt been a stumbling block for Algerian trademark owners, who up to now have not been able to use the Madrid System to extend their rights to members that are parties to the Protocol alone.

Although the Madrid System comprises the Agreement, the Protocol and the Common Regulations, since the amendment of article 9 sexies of the Protocol (the safeguard clause) it is the Protocol alone which applies between States bound by both the Agreement and the Protocol. The accession of Algeria therefore represents a milestone for the Madrid System, given that from 31 October 2015 all international registrations of marks will be governed exclusively by the Protocol and the system as a whole will, as a result, be greatly simplified.

Author: Cristina Arroyo

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Accession of Rwanda to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

On 17 May 2013 WIPO officially announced Rwanda's accession to the Madrid System, whose members, with this year's accessions, now number 91. 

The Government of the Republic of Rwanda deposited its instrument of accession on 17 May 2013. 

The Madrid Protocol will enter into force, with respect to Rwanda, on 17 August 2013.

Author: Foreign Filing Department

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India joins the Madrid System for the International Registration of Marks

On Monday April the 8th 2013, WIPO officially announced India's accession to the Madrid System for the International Registration of Marks, bringing the number ofcountries that have joined the Madrid System to 90.

The instrument of accession to the Madrid Protocol for the International Registration of Marks has been deposited by India's Minister for Commerce and Industry.

India's accession will take effect on 8 July 2013, at which time it will be possible to protect trademarks in India either as Indian national trademarks or in the form of international marks designating India as a Contracting Party.

Author: Foreign Filing Department

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New Accessions to the Madrid Protocol relating to the Madrid Agreement concerning the International Registration of Marks

Designation of the Philippines and Colombia became possible under the Madrid Protocol in the framework of the Madrid System for the International Registration of Marks on 25 July and 29 August 2012, respectively.

Designation of New Zealand, in turn, will be possible from 10 December 2012.

To date, the number of countries that have joined the Madrid System totals 88, with Mexico being expected to join in early 2013 and afterwards Thailand.

Trademark rights will thus be obtainable under the Madrid System for the International Registration of Marks in three IberoAmerican countries. Cuba has been a member of the Madrid System since 1989, Columbia has recently joined, and Mexico will become a member shortly.

Author: Cristina Arroyo, Juan Miguel Sainz de Marles e Inmaculada Rodes

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