First, when a merchant or trademark holder wished to register his trademark, he had to register it in the country where he wanted to protect it, and such protection, granted by a particular country, protected the interests of the holder only in that country. Therefore, if any trader/brand holder who wished to protect his trademark internationally was required to file a separate trademark registration application in each country where he wished for such protection. This situation has resulted in a chaotic situation, as there are several applications and has therefore been very uncomfortable and costly for applicants. The Madrid protocol looked like a saviour in such a chaotic situation. It helps and simplifies the registration of trademarks in several countries around the world that are members of this system by simply filing a single application with the National or Regional Registrant`s Trademark Office. India has decided to become one of its signatories and has adhered to the Madrid Protocol and has been part of the system since 8 July 2013. Today, 90 countries are part of the Madrid system, and India is one of those countries. 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”. New Zealand is a signatory to the Madrid Protocol. Not all countries are signatories to the protocol and, as such, it is not possible to designate these countries as part of an international application filed through the Madrid system. Notable exceptions are South Africa, Canada and Hong Kong. In 1966 and 1967, efforts were made to address this problem by creating a new treaty that would reflect the needs of the time, not the world of the 1890s, when the agreement was adopted. This led to the development of the Trademark Registration Treaty (TRT), which was adopted in Vienna in 1973 and came into force in 1980 with five States Parties, namely Burkina Faso, Congo, Gabon, the Soviet Union and Togo. Given that there were no other TRT memberships and that the number of registrations had been low since its inception, it was clear that the TRT would probably not have supplanted the Madrid agreement. Compliance with the convention or protocol includes membership of the Madrid Union. As of June 2019,[update] there are 104 members from 120 countries. The original treaty has 55 members, all of which are equally parties to the protocol (when Algeria acceded to the Madrid Protocol on 31 October 2015, all members of the Madrid agreement were also members of the Madrid Protocol and many aspects of the Madrid agreement no longer have practical effect).
The term “Union de Madrid” can be used to describe the legal systems that are parties to the agreement or protocol (or both). [4] In the run-up to the introduction of a multi-judicial (or at least pan-European) Community brand, the relevance of the Madrid system has been tested.