News & Insights

When Australia joined the Madrid Union in 2001, it opened up streamlined international trade mark registrations to Australian businesses under the Madrid Protocol.

Since then, the Madrid Union has grown steadily.  By the end of 2019 it will have 106 members covering 122 countries.

This year has seen Samoa (4 March), Canada (17 June) and Brazil (2 October) join, with Malaysia due to join on 27 December 2019.  Last year Afghanistan, Indonesia and Malawi joined.

implications of madrid union expansion

For Australian businesses, it is now far easier and often cheaper to obtain registration in the new Madrid Protocol countries.  They can be included in any new application under the Madrid Protocol.

For Australian businesses that have already registered their trade mark internationally under the Madrid Protocol, it is possible to add the new countries to the existing Madrid Protocol registration.  This process is known as subsequent designation.

Whether to make a subsequent designation or lodge a new Madrid Protocol application depends on the renewal due date of the existing Madrid Protocol registration.  Madrid Protocol registrations last for 10 years before they must be renewed.  A subsequent designation will be registered for the balance of the 10 year term of the original Madrid Protocol registration.

If the original Madrid Protocol registration is coming up for renewal, it is more cost effective to lodge a new application to enjoy the full 10 year registration period.  If the registration has most of its 10 year registration period left to run, a subsequent designation makes more sense.

what if you already have a national registration?

What if a business has already registered your trade mark directly in Canada, Malaysia or any of the Madrid Protocol countries?  What does the Madrid Protocol offer there?

Where a Madrid Protocol registration and an earlier national trade mark registration coexist in the same country, an application can be made for the Madrid Protocol registration to replace the earlier national registration.  This allows the Madrid Protocol registration to gain the earlier priority date of the national registration.

The national registration can then be allowed to lapse, with only the Madrid Protocol registration being renewed.  This takes advantage of the streamlined and cost-effective renewal process under the Madrid Protocol, critically avoiding the cost of engaging local lawyers in the foreign country to handle the renewal process.

how we can help

Macpherson Kelley regularly manages Madrid Protocol registrations on behalf of Australian clients, as part of our broader trade mark services that help our clients to protect their valuable brands.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.