By Alberto Zacapa

The Madrid Protocol (“Protocol”) is one of two international treaties of the Madrid System or International Trademark System (“System”). The Protocol provides a cost-effective and efficient way of acquiring trademark protection in multiple countries. The Protocol allows an applicant to file one international application through a single office, in one language, with one set of fees in a single currency. Moreover, foreign associates or agents are not needed to assist in the filing process. If an application is approved, the World Intellectual Property Organization (“WIPO”) may grant international certificates of registration. While these international registrations do not offer protection in any specific country, they indicate approval for designated countries. It is up to each designated country to grant or refuse protection. If protection is granted in a country, the effect is the same as if the mark had been registered through that country’s trademark office. The benefits of the Protocol extend to simplified post-registration maintenance of a trademark registration. The Protocol provides one straightforward step to record any changes in name, ownership or address of either the representative or the holder of a mark. WIPO then transmits any request for protection, renewal and other documentation to all designated offices.

Countries in Latin America have long been hesitant to adopt the Protocol. Perhaps, this hesitancy stems from the possibility that its adoption would constitute a reduction in revenue from the trademark application process. Spanish was only introduced as a language of the Protocol in 2004. The language limitation had previously excluded the Spanish-speaking region. Nonetheless, membership has remained low among the Latin American countries. However, in early 2012, Colombia became the 87th member of the Madrid System. The benefits of having a streamlined system that works in parallel with the national trademark application process were recognized by Colombian Vice President Angelino Garzón, who led this transformation. The Protocol entered into force a few months later on August 29, 2012.

Similarly and more recently, the Mexican Senate ratified the decision led by former Secretary of Economy Bruno Ferrari to adopt the Protocol.  In Mexico, the 89th member of the and third Latin American nation to join, the Protocol will enter into force on February 13, 2013.  Though the Mexican Intellectual Property Institute, the governmental IP regulating body, is relatively efficient and handles a large volume of applications, there is no doubt that cost savings and more efficient handling of client portfolios in Mexico will result from this change in 2013.  Mexican and WIPO officials agreed that “brand owners in Mexico stand to greatly benefit from the Madrid Protocol” and the sustained growth in membership continues to further WIPOs objective of “transforming the Madrid System into a system with truly global reach.” 

The ever-increasing economic importance of Latin America and its many prosperous economies are sure to make headlines in 2013.  As a global law firm, DLA Piper is optimistic that this trend will translate into increased efficiencies as the incentives for nations to adhere to global agreements like the Madrid Protocol become ever greater.  

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