Saturday, October 21, 2017

Difference between Madrid Agreement and Madrid Protocol

The Madrid Agreement and the Madrid Protocol are independent, parallel treaties, with separate, but overlapping, regulations and memberships. There is a certain difference between two these treaties in the following aspects:

Basic of an Int'l Trademark Registration:

The Madrid Agreement requires that an International Trademark Application be based on a home country registration. This restriction is felt to disadvantage the trademark owners because it takes a certain period of time to obtain a registration in the home country. Under the Protocol, the applicant may base its application for international registration on an application filed with the home country's trademark office or a registration granted by that office. This change will also allow those who apply under the Protocol to take advantage of the six-month priority period of the Paris Convention.

Filing language

Under the Agreement, the working language is French and all applications filed under the Agreement must be in French29. However, under the Protocol, the Office of Origin may require applications made under the Protocol to be filed in English, French or Spanish or it may permit the applicant to choose one of the three

Safeguard clause

The "safeguard clause" as regulated in the Article 9sexies of the Protocol provides the answer to the question of which treaty will be binding between contracting parties to both the Agreement and the Protocol. This is one of the main new features of the Protocol in comparison to the Agreement.

Remedy to central attack

Under the Madrid Agreement, "central attack" may occur during the first 05 years of an Int'l Trademark Registration as follows: Where the basic application or basic registration has its scope of protection limited or eliminated during that time, under the Agreement, the international extension registration were similarly limited or eliminated and there was no recourse for the owner of the international registration. The Madrid Agreement's "central attach" provisions are considered unfair by many trademark owners because many of the grounds available to reject, oppose or move to cancel a domestic registration are not recognized in other countries. However, under the Protocol, when an international registration is canceled during its first 05 years due to failure of the basic application or basic registration, the international registration may be transformed into national (or regional) applications in each of the Contracting Parties in which the international registration had effect, maintaining the priority date of the international registration. This possibility does not exist under the Madrid Agreement.

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