Update of the Madrid System in Hong Kong

July 17, 2018

Update of the Madrid system in Hong Kong

The Madrid International Trademark Registration System (hereafter “the Madrid System”) will apply to Hong Kong as early as in 2019. This article is to provide a brief introduction of the Madrid System and the update of the same.

Introduction to the international trademark:

The Madrid System is a major international system that promotes the registration of trademarks throughout the world. Its legal basis arises from the Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the Madrid Agreement (1989). The Madrid System provides a centrally managed system for obtaining a number of trademark registrations in different jurisdictions. Registration through the Madrid System does not constitute a uniform registration, such as the European (EU) Trademark system; rather, it forms a series of national rights through internationally registered international registrations. Madrid System has provided mechanisms for trademark protection in many countries around the world, more effectively than in individual countries or in individual jurisdictions. The Madrid Protocol provides for the international registration of trademarks through an application that covers multiple countries. Single registration covers a wide range of countries with advantages in portfolio management and costs savings, rather than an independent country registration portfolio. Madrid System now allows the filing, registration and maintenance of trademark rights in multiple jurisdictions, provided that the target jurisdiction is the party of the system. The Madrid System is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. As of 2017, the Madrid System currently has 90 country members.

Advantages of the Madrid System:

1. The Madrid System provides a mechanism for a trademark owner who has an existing trademark application or registration (known as a “basic application” or “basic registration”) in a member jurisdiction from WIPO to obtain its trademark “International Registration” from WIPO. The trademark owner may extend the protection provided to the international registration to one or more member jurisdictions, referred to as “designation”.
2. A useful feature of the Madrid System is that such protection can often be extended to other jurisdictions at any time so that international trademark protection can be extended to other member countries or subsequent new jurisdictions in Madrid System.
3. From a practical point of view, the main advantage of the Madrid System is to allow trademark owners to submit trademark protection for any or all member states by submitting one application in the home country and make any changes (such as changing the name or address) or renewal of registration in all applicable jurisdictions through a single management process, and achieve cost savings.

Update of Madrid System in Hong Kong:

1. As soon as the Madrid System is in practice in Hong Kong as early as in 2019, the brand owner can submit a single application in Hong Kong (i.e. home jurisdiction), pay a set of costs, and specify one or more contract jurisdictions, to extend the home application/registration overseas.
2. Hong Kong’s accession to the Madrid Protocol will enable local companies to expand their overseas business through a single channel and to more effectively register and manage their trademarks. Multinational companies wishing to register trademarks in Hong Kong can also use the Madrid System to expand their geographical reach.
3. However, brand owners who are vested in Hong Kong (or China) will be subject to Article 3bis of the Madrid Protocol because international applications originating in Hong Kong cannot designate China or vice versa. In other words, they must seek protection by registering their trademarks in either or both Hong Kong and China.

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