I. Formation and Definition of the Madrid Protocol:
As is known, the protective rights arising from trademark registration are valid only within the borders of the country where the registration is made. If it should be wished that the trademark is registered abroad and thus be protected within the borders of such country of registration, under normal circumstances, required transactions are carried out by filing of an application within the framework of the trademark laws of the country in question.
However, as shall be appreciated, carrying out the registration procedures by means of filing a separate application for each country is both costly and onerous. For this reason, as well as the effect of globalization and the need for practical growth in business life, various global registration systems have been established. One of them is the Madrid System.
In line with the above-mentioned need, countries came together for the Madrid System and formed an international platform; subsequently, on 14 April 1981, the “Madrid Agreement Concerning the International Registration of Marks” was signed. On 27 June 1989, further to the development of the said Madrid Agreement, the “Protocol Relating to the Madrid Agreement” (the “Protocol” or the “Madrid Protocol”) was concluded.
The Protocol is an agreement that provides companies with a registered trademark or registration application in the office of their country of location the ability to obtain several international registrations in numerous countries party to the Protocol with a single application. Turkey has become one of the contracting states party to the Protocol and started to implement the provisions thereof as of 1 January 1999.
II. Purpose and Benefits of the Madrid Protocol:
The Protocol ensures:
i) international registration of trademarks in several countries by making a single application and using a single language; and
ii) recording of the changes (such as changes to the company name or address, pertaining to any transfers, changes concerning restrictions on goods and services lists, etc.) to be made after the trademark is registered with the International Registry by means of following of a single and simple procedure.
Thereby, with a single application, registration with several countries is made possible, time is saved and registration costs per country are minimized. Furthermore, the limitation of the examination period to 18 months as of the registration application prevents certain problems such as dragging on of the application process. At the same time, unless a registration application recorded as an international application is explicitly and abstractively rejected by a state from which the registration is requested, such international registration application results in and causes a direct registration application having been filed for that country.
III. Parties Who Would be Entitled to Apply the Madrid Protocol:
In a country party to the Protocol, international trademark registration application can only be filed by a real or legal person;
i) who has a real and active industrial or commercial business in such country; or
ii) who is resident in that country; or
iii) who bears the nationality of that country.
Therefore, this system cannot be used by real or legal persons who are not affiliated with a member state of the Madrid System by means of establishment, residence, or nationality. At the same time, said trademark protection cannot be provided in a country who is not a party to the Protocol. Finally, in order to ensure the registration of a trademark on the international level, existence, primarily with the registration office of the relevant country of origin (for our country, Turkish Patent and Trademark Office, (the “Turkish Patent” or “TPI”)), of the registered trademark or trademark registration application is mandatory.
IV. Mode of Administration of the Madrid Protocol:
The international process operates bidirectionally.
1. Applications Made to Turkish Patent:
Turkey is an active contracting party under the Madrid System. The applications filed with Turkey are directed to Turkey in the form of registration requests by other countries party to the Madrid System who are also of the status of offices of origin. Application requests are evaluated in accordance with the national legislation within the scope of the Decree No. 256; the legal process is carried out as in the case of national applications. While the registration requests are envisioned to be concluded within the prescribed period of 18 months; correspondence regarding the process is conducted with the World Intellectual Property Organization (“WIPO”).
2. Applications Made by Turkish Patent:
As for the applications made by Turkish Patent, Turkey is in the position of the office of origin; hence, it files the international registration application request with other country/ countries who are also contracting party/ parties. It is essential that these applications are submitted by the official trademark offices of the countries who are parties to WIPO and, therewithal, the applications made directly to WIPO (without the intermediation of the office of origin) are returned as undue.
a) Conditions of Applications Made by Turkish Patent:
For the applications to be made via Turkish Patent, the office of origin of Turkey, it is required that:
i) primarily, there exists a trademark which has been already registered or which is at the stage of application for registration;
ii) “MM2 form” is filled out online, such form being accessible through the link “http://www.wipo.int/madrid/en/forms/”, and a petition addressed to the institute stating the content of the request is present,
iii) an application has been filed with the international office by the official office of origin;
iv) the application is in parallel with the list of goods and services and the international classification of the trademark previously registered with the office of origin or the trademark sample presented in the original application;
v) the list of goods and services is created in line with the NICE classification,
vi) the will for the protection of the trademark is expressed by the contracting parties,
vii) the application is made either in English or French,
viii) documents showing the due payment of the required fees are submitted (principal fee, complementary fee for each designated contracting party who does not claim individual fees, individual fee for each contracting party specified in the Protocol and who having had declared their wish to receive such a fee, and, for contracting parties who are not to receive individual fees, additional fees for each class where there are more than three classes relating to goods and services); and
ix) if the application is made by attorney, a power of attorney is procured or the existing, previously issued power of attorney is evinced.
b) Evaluation of TPI Applications:
i) The origin office confirms that the international trademark registration application is the same with the main application or the main registration.
ii) Only the applications that are not incomplete in any way or the incomplete applications of which the lacking parts are fulfilled by the applicant are delivered.
iii) The necessary examination and evaluation are carried out by WIPO.
iv) Application requests are examined and decided by the contracting party offices within the scope of the national legislation of each country. These decisions are communicated to the applicants via WIPO.
v) An announcement decision is made for all countries for which there is a registration request as per the documents submitted to the registration area.
c) Details of the Process Regarding Applications Made by TPI:
The date of receipt of the international application is accepted as the application date by the office of origin. However, if the office of origin fails to deliver the application to the International Bureau (WIPO) within two months, then the date on which the application is sent to the International Bureau will be deemed as the application date and such date will be recorded with the International Registry. Subsequently, the contracting parties from whom the legal protection to be provided by the trademark registration by the International Bureau is demanded are notified. Contracting parties, with whom the international registration is requested, examine the international application according to their own legislation and they reject or agree to the application in line with their evaluation. The period of notification of the rejection decision for such international application by the contracting parties is 12 months. However, a contracting party can decide to increase the relevant time limit up to 18 months within the framework of the Protocol and give notice of such decision. Rejection notifications sent to the International Bureau after the expiration of the established time limits are not considered as rejection notices conveyed in due form and it is accepted that trademark protection is provided by the contracting parties.
If the trademark protection is also requested to be provided by the contracting parties who were not included in the pending international application or, in case of completion of the international registration process, in the relevant international application subject of such registration; such parties can also be the subject of registration. Subsequent designation is made in order to ensure registration in other countries that are not included in the application.
The general period of validity of international trademark registration and legal protection provided by such registration is ten years. However, the international registration and protection in question can be extended for another ten years at the request of the trademark owner by the payment of the required fees for renewal and, thus, can be renewed periodically in this way.
V. Conclusion and Context:
With the Madrid Protocol, trademark registration procedures, especially in the international platform, have been placed on an accessible basis that includes ease of application both temporally and financially, and the way for globalization in commercial life has been paved. Accordingly, it is important to carry out the procedures for the international registration of trademarks through proxies who are experts in their fields; the effectiveness of the system and practical gains in the process are also certain to show their effects.
