News & Insights

The Madrid Protocol (or more formally the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks) is a multinational system that streamlines the process of registering trade marks internationally.

Once an Australian entity has applied to register its trade mark in Australia, it can use that Australian application or registration as the springboard for international registration under the Madrid Protocol.

Rather than filing directly in foreign countries, an application under the Madrid Protocol is lodged centrally through the World Intellectual Property Organization (WIPO) in Switzerland. WIPO then disseminates it to the respective countries designated in the application. This means that it is not necessary to engage foreign lawyers to manage the applications in the different countries unless issues arise at the point of examination.

new madrid protocol members

While no new countries became parties to the Madrid Protocol in 2020, 2021 will see at least two additions: Trinidad & Tobago joined on 12 January 2021 while Pakistan will join on 24 May 2021. Pakistan’s accession will bring the total number of Madrid Protocol parties to 108.

implications

It means that these countries can be included in any new applications under the Madrid Protocol (Pakistan obviously only after 24 May).

For trade mark owners that already have a registration under the Madrid Protocol, they can add registration in Trinidad & Tobago or Pakistan as a subsequent designation.

Two-way trade between Australia and Pakistan is approximately $2 billion. The Australian Department of Foreign Affairs and Trade views good prospects for growth in trade and investment in education, agribusiness, mining equipment, processed food and IT/communications, as well as future opportunities for clean energy technology, medical technologies and infrastructure investment.

For businesses in these sectors, Pakistan should be on the radar.  Securing trade marks in an export market should be one of the first steps in an expansion into that market.

The Macpherson Kelley intellectual property team regularly assists Australian businesses to register their trade marks internationally under the Madrid Protocol.

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.