Before filing an international trademark application, notifying parties should at least search Madrid Monitor, which conducts a search of trademarks registered by the Madrid Protocol, on trademarks similar or identical to their trademarks already registered in the countries that the applicants wish to designate in the international application. For example, it is possible, under the protocol, to obtain an international registration on the basis of a pending trademark application, so that a trademark holder can, simultaneously or immediately after, file an application in a Member State, effectively apply for an international registration. In comparison, the agreement requires that the trademark holder already have an existing registration in a member jurisdiction, which can often take many months and sometimes years. Moreover, the agreement does not allow for the “conversion” of international records that have been “centrally attacked”. The Madrid system offers a centralized system for obtaining a set of trademark registrations in separate jurisdictions. Registration by the Madrid system does not create a uniform registration, as in the case of the UNION trademark system; On the contrary, it creates a set of national rights through an international registration that can be managed centrally. Madrid offers a trademark protection mechanism in many countries of the world that is more effective than applying for separate protection in each country or jurisdiction. On 15 November 2019, the Madrid Protocol has 106 members covering 122 countries representing more than 80% of world trade. Among the members are three regions listed below: the completion of this research allows applicants to assess the ease or difficulty of registering their trademarks in the countries they wish to name in international demand and to modify their enforcement strategy accordingly. Applicants also have the opportunity to contact IP agencies and legal experts to help them properly complete their trademark registration.
This is why the Madrid Protocol offers a simple economic solution to the problem of trademark protection in several countries. Designated Member States have 12 or 18 months (renewable if the mark is opposed by a third party during the review) either to give the brand issuing a declaration or to refuse the application. The applicant is required to designate at least one member of the Madrid Protocol other than the country of origin when filing the international application. The applicant may choose to designate as many Member States as he wishes at the time of the application or after the issuance of the international registration. Additional denominations at later times are also allowed. Japan has revised its trademark legislation by formally adopting the Nice classification (an international trademark classification system for products and services) as well as service applications for service brands. The members of the European Community have amended their legislation to comply with the European Community`s harmonisation directive.