Madrid Protocol

Madrid Protocol

Overview

The Philippines is a member of the Madrid Protocol. The Madrid System allows trademark owners to seek protection in multiple member countries through a single international application.

The system may be used both by Philippine applicants seeking trademark protection abroad and by foreign applicants seeking trademark protection in the Philippines.

Advantages & Risks

  • Centralized Management: One of the principal advantages of the Madrid System is the ability to centrally manage trademark filings across multiple jurisdictions.
  • Varying Standards: However, examination standards vary from country to country, and any refusals must be addressed separately in each designated jurisdiction.
  • Dependency: In addition, an international registration remains dependent on the basic application or registration for a specified period.
  • DAU Requirements: Furthermore, trademarks registered in the Philippines through the Madrid System are also subject to the Philippine DAU (Declaration of Actual Use) requirements.

Strategic Note: Accordingly, where protection is sought only in the Philippines, a direct national filing may in some cases be a more appropriate option.

For Philippine Applicants

Philippine applicants may use a Philippine trademark application or registration as the basis for an international application filed through the World Intellectual Property Organization (WIPO), thereby extending trademark protection to multiple Madrid member countries.

The Madrid System offers several advantages, including:

  • Centralized management of multi-country trademark filings
  • Simplified filing procedures and administration
  • Easier management of renewals, assignments, and ownership changes

For businesses planning international expansion, the Madrid System can be an efficient and cost-effective mechanism for obtaining trademark protection in multiple jurisdictions.

For Foreign Applicants

Foreign applicants may designate the Philippines through the Madrid System based on their home-country trademark application or registration.

However, even where the Philippines is designated through an international registration, registrability is independently examined by the Intellectual Property Office of the Philippines (IPOPHL).

Accordingly, a Provisional Refusal may be issued on grounds such as:

  • Lack of distinctiveness
  • Descriptive character of the mark
  • Conflict with prior trademark rights
  • Violation of public policy or morality
  • Other grounds under Philippine trademark law

In such cases, responses may be filed through a Philippine attorney, including the submission of arguments, amendments, disclaimers, or other appropriate measures. With proper handling, many provisional refusals can be successfully overcome, allowing the application to proceed to registration.

Our Support at TSUBAME IP Philippines

At TSUBAME IP Philippines, we assist both Philippine applicants seeking overseas trademark protection and foreign applicants designating the Philippines, providing comprehensive support in relation to:

  • Filing strategies
  • Provisional refusal responses
  • Disclaimer practice
  • DAU compliance
  • Trademark portfolio management