Algeria Joins Madrid Protocol, Triggers Global Easing Of Registration Of Marks

Trademark applicants should soon be able to make better use of the Madrid system for the registration of international trademarks, the World Intellectual Property Organization has announced. Algeria became the last country to join a protocol to the international trademark system, which will allow the protocol to rule the international registration procedures, making it easier for applicants to get global protection.

The Madrid system for the International Registration of Marks encompasses the Madrid Agreement Concerning the International Registration of Marks (1891, revised in 1911, 1925. 1934, 1957, 1967, and amended in 1979), and the Protocol to the Madrid Agreement (1989).

Algeria deposited its instrument of accession to the protocol with WIPO in July, the last outstanding member to do so. This means the protocol will become the only set of international registration procedures once the protocol enters into force in Algeria in October.

“This represents a milestone for the Madrid System and its users,” WIPO said in a press release. “From now on, all international registrations of marks will be exclusively governed by the Madrid Protocol. As a result, the filing and management of international registrations will be simplified for users.”

“Brand owners in Algeria will also benefit from this accession, gaining full access to the territories covered by the Madrid Protocol for international trademark protection,” WIPO said. An information notice was posted on the website here.

The Madrid system allows for international applications of a trademark, subject to a basic fee, which, according to WIPO, is reduced to 10 percent of the prescribed amount for international applications filed by applicants whose country of origin is a least developed country.

The Madrid Agreement and the Madrid Protocol are two different treaties. After the protocol was adopted, some countries belonged to the Madrid agreement only, some to the protocol only and some to both instruments, WIPO sources told Intellectual Property Watch. The Madrid system was thus a fragmented system.

The accession of Algeria to the protocol renders the Madrid Agreement non-operational, the sources said. The Madrid system will be governed only by the protocol from the date of entry into force of the protocol in Algeria, on 31 October.

Among the differences between the Madrid Agreement and the Madrid Protocol is that applicants can now file an international application at the same time as a national application. Under the Agreement they had to wait for their trademark to be registered with their national office before filing an international agreement.

Under the protocol, they can also choose their connection to their home country, whether it is domicile, nationality or commercial establishment-based. Under the agreement, the choice was in prioritised order.

Applicants can also now designate any member of the Madrid system, since all members are under the provisions of the protocol. Before Algeria ratified the protocol, applicants were restricted in their choice due to the fragmentation of the system, the WIPO sources said.

Also, trademark holders will have the ability to go directly to WIPO to request any subsequent change to their international registrations such as renewals.

When WIPO receives an international application, it carries out an examination for compliance with the Madrid Agreement and its Protocol, and their regulations. From October, only the protocol will be used. The registration is notified to each designated contracting party so that the national trademark office can determine whether the mark qualifies for protection or if it is in conflict with a mark registered previously in a particular country.

An international registration is “the same as if the mark had been deposited directly with the office of that Contracting Party,” the WIPO website specifies. An international registration is effective for 10 years and may be renewed for further period of 10 years subject to the payment of renewal fees.

According to a Swiss practitioner, at first sight, the change to the Madrid system should not change much in terms of applications for Swiss applicants unless Algeria is designated as a country in which they wish their mark to be protected.

What would really make a difference would be if more countries become members of the system, such as Canada, some countries in Latin America and Africa, Hong Kong, and the United Arab Emirates, he told Intellectual Property Watch.

According to WIPO sources, the Madrid Union [pdf] has 95 members but, taking into account the countries covered by a designation of the European Union and OAPI (l’Organisation Africaine de la Propriété Intellectuelle), which are members of the protocol, the Madrid system actually covers 111 countries.

 

Image Credits: Flickr – Mike Atkinson