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The Madrid System: Protection of Trademarks Essay

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Updated: Sep 11th, 2022

Introduction

The Madrid System of the trademark protection is aimed at simplifying the procedure of registering the trademark on the international level when the company applies to the trademark registration office and wait while the office members verify if this trademark is valid and can be registered on the international level using the cross-border protection laws. At this point, the main purpose of the Madrid System is enlarged on in the following statement:

The 1891 Madrid Agreement (to which the United States is not a part) built on the idea of enhancing the efficiency of international registration, by providing for a single application to be processed initially by the World Intellectual Property Organization.1

Besides, the United States became the member of the Madrid Protocol in 2003.2

Main body

Simplification of rules of registration and Universalist approaches to his procedure were the primary bases for introduction of a new scheme that is supposed to create equal rights for all parties concerned. ‘The Madrid System compromises two treaties, the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement) and the Madrid Protocol for the International Registration of Trademarks (Madrid Protocol)…’3

This means that some parties may be a part of one of these treaties and non-member in the other or be member of both treaties. The problem is that some categories of the Madrid System fail to maintain their equalising and universalising function where the same approach and the same procedure are used by all parties that want to register their trademarks. The main difficulty in consideration of this system concerns the effectiveness of this scheme for one country and inapplicability for another. The benefits of the Madrid System include the procedure on one hand as well as the procedure can be considered one of its main disadvantages. In this respect, the controversial nature of this trademarks protection system is the main cornerstone of the present discussion.

There are numerous debates over the cultural relativism and universalism of different laws and rights that should be given to the members of the global community. However, the trademarks and other issues related to intellectual property should be taken into account while establishing the universal laws that would protect all countries operating on the international level. In this respect, the idea of the Madrid System can be considered initially positive as it focuses on provision of a single application using one language for all member states. Multiple applications were planned to be prevented due to the single database and necessity of approving the trademark application through a single database only.

The idea of a single application was aimed at reducing costs for trademark registration.4 However, application of laws aimed to protect trade mark rights of the owners still remains a complicated issue that involves specific procedures. For instance, the companies in the United Kingdom have to undergo the procedure established by the Trade Marks Act 1994 with regard to the Paris convention and the Madrid Protocol that have specific features, functions, and regulation procedures.5

The universalist approach used while establishing and implementing the universal system of trademark rights protection does not seem to offer a great number of advantages for the countries that want to operate under their own registered trademarks on the international arena because it also involves difficulties.

At the same time, the Madrid System opens very important perspectives for companies that have once registered their trademarks in their native countries: they do not have to register their trademarks for the operation in the international level because their registration data is automatically filed to the database of the World Intellectual Property Organisation and takes place of the individual national application in the countries agreed upon by the parties of the agreement.6 In this case, every country that ratifies the Madrid Protocol or Madrid Agreement should also adjust the domestic laws in the sector of trademark protection of the rules and regulations stipulated in the parts of the Madrid System protection of trademarks procedure.

Every nation has certain domestic laws that outline the procedure of application and registration of the trademark. A question arises on this basis whether countries that operation in different fields of business on the international level should apply Madrid Protocol if it is so unfavourable to their domestic laws or they should register the trademarks as they did before. The main disadvantage of the Madrid System including the Madrid Agreement and the Madrid Protocol is the territorial orientation which contradicts the concept of the universal trademark protection system.7

This means that Universalist approach prevails for the Madrid System whereas every country would prefer to act in accordance with the laws and regulations smoothly applicable to its domestic laws and principles of registration. At the same time, some authors advocate the necessity of obtaining universal rules and regulations that would focus on a single way of registering the trademarks in different countries in a simple way compared to the existing operations due to the unification of laws and globalisation of business.8 The application of the Madrid System can be considered contarversial also because it is more ‘…procedural rather than substantive in nature…’9; this means that procedure can be the same while other provisions may differ with regard to the domestic laws and regulations.

The contradictions that occur in the process of operation of some laws make the global community involved in discussion demonstrate certain concerns because of the lack of universal benefits for all parties concerned. At the same time, there can be no universal laws that would make its interpretation beneficial for all parties.

In this respect, every country should weigh up all pros and cons of the Madrid System including the Madrid Agreement and Madrid Protocol and make a decision concerning the applicability of these regulations towards the domestic laws and regulations that are already in operation and the potential advantages and disadvantages of the regulations if applied or not applied to the domestic companies that would like to expand to the international market. Conditions of application should also be considered because some international partners may refuse to cooperate with companies that refuse to make deals within the clearly regulated procedure and insist on implementation of other laws and regulations related to the trademark protection procedures.

Conclusion

To conclude, domestic laws of most countries are not universal for all companies either; in this respect, application of the Madrid system makes the dispute open while international market spreads more and more and requires certain provisions to be made for less complicated operation and registration of new trademarks.

Bibliography

Annand, R & HE Norman, Blackstone’s guide to the Trade Marks Act 1994, Blackstone Press Limited, London, 1994.

Barch, DL, ‘Navigating the Madrid Protocol’, A New Global Regime For The International Registration Of Trademarks, Intellectual Property Law Bulletin, vol. 8, no. 2, 2003.

Kaseke, E, ‘Trademark dilution: a comparative analysis’, Thesis, 2006. Web.

Samuels, J M & LB Samuels, ‘The changing landscape of international trademark law’, George Washington Journal of International Law & Economics, vol. 27, 1993-1994, pp. 433-440.

Schechter, RE, ‘Facilitating trademark registration abroad: the implications of the U.S. Ratification of the Madrid Protocol’, George Washington Journal of International Law & Economics, vol. 25, 1991-1992, pp. 419-425.

Sherman, AJ, Franchising & licensing: two powerful ways to grow your business in any economy, 3rd edn, AMACOM, New York, 2004.

Yu, PK, Intellectual property and information wealth: trademark and unfair competition, Greenwood Publishing Group, Westport, 2007.

Footnotes

  1. PK Yu, Intellectual property and information wealth: trademark and unfair competition, Greenwood Publishing Group, Westport, 2007, p. 241.
  2. Ibid, p. 242.
  3. AJ Sherman, Franchising & licensing: two powerful ways to grow your business in any economy, 3rd edn, AMACOM, New York, 2004, p. 140.
  4. DL Barch, ‘Navigating the Madrid Protocol: A New Global Regime For The International Registration Of Trademarks’, Intellectual Property Law Bulletin, vol. 8, no. 2, 2003, p. 16.
  5. R Annand & HE Norman, Blackstone’s guide to the Trade Marks Act 1994, Blackstone Press Limited, London, 1994.
  6. RE Schechter, ‘Facilitating trademark registration abroad: the implications of the U.S. Ratification of the Madrid Protocol’, George Washington Journal of International Law & Economics, vol. 25, 1991-1992, p. 419.
  7. Yu, op. cit., p. 312.
  8. JM Samuels & LB Samuels, ‘The changing landscape of international trademark law’, George Washington Journal of International Law & Economics, vol. 27, 1993-1994, p. 433.
  9. E Kaseke, ‘Trademark dilution: a comparative analysis’, Thesis, 2006, p. 85. Web.
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