/ Latin American Relationship With the Madrid Protocol: Current Situation and Short-Term Accession Expectations

By Laura Hernández Bethermyt

I. Preamble

To register a trademark in the country where a rights holder wishes to begin operations, at least one trademark application must be filed. There are two main options. The first is based on the Paris Convention[1] for the Protection of Industrial Property, which requires submitting separate applications to each intellectual property office in the foreign countries or regions where protection is sought. The second option, which is the main focus of this article, is the Madrid System[2], which provides a streamlined method through a single international application. In this application, the holder can specify all member countries and intergovernmental organizations under the Madrid System, currently totaling 130, where protection is desired. Once the international registration (also known as the Madrid registration) is completed, the holder has the opportunity to expand the geographical scope of protection beyond the initially designated countries through subsequent designations. This process enables the extension of protection to the jurisdictions of new members joining the Madrid System, in addition to existing ones. In Latin America, Cuba, Colombia, Mexico, Brazil, and Chile are the five countries that currently form part of the Madrid Protocol. Gradually but steadily, more countries in the region have been joining.

So, why choose one system over the other? What benefits has the implementation brought? Has the Madrid Protocol been advantageous for Latin America?

II. Relevant Figures and Actions

In 2023, 64,200 trademark applications were filed through the Madrid Protocol, with a total of 448,340 trademarks registered, according to the Madrid System Yearly Review[3], which includes data from Latin American countries among the overall figures.[i]

Although applications and registrations are the most visible and quantifiable metrics, they are not the only advantages. Other equally valuable benefits include subsequent designations, which allow trademark holders to extend protection to other member countries of the Madrid System. With a single international trademark registration, it becomes easier to access new markets in the future, in line with a company’s growth and available budget.

Users are offered the unique possibility to strengthen an existing Madrid registration by adding new member jurisdictions to it through subsequent designations, thereby expanding geographic protection in alignment with evolving business needs and export markets.

The number of subsequent designations continues to rise as the System welcomes new members and markets expand. Approximately one-fifth of all Madrid registrations filed between 1978 and 2018 were used for subsequent designations. Among registrations filed between 2005 and 2023 and later used for such designations, holders on average expanded protection to around five additional Madrid member markets. Moreover, over 75% of holders who made subsequent designations during this period tended to expand protection within four years of the original registration date[4].

Understanding the behavior of national trademark offices allows us to better assess what is or isn’t convenient, what should be recommended to trademark holders, and the most appropriate course of action to safeguard intangible assets with tailored solutions adapted to specific business needs.

It is also essential to consider processing times for trademark registration, renewals, and recordals, which leads to a decision: whether to pursue an international trademark or to handle individual national filings.

The greatest advantage for trademark holders using the Madrid System is its administrative simplicity in securing protection in multiple jurisdictions. This results in significant cost savings, both in the initial filing and in the maintenance of trademark rights abroad.

III. Latin American Chronological Overview

As previously mentioned, slowly but steadily, several countries in the region have joined the Madrid Protocol over the years.

Cuba was the first country in the region to accede, doing so in 1995. It was followed by Colombia 17 years later, in 2012. Mexico joined shortly thereafter, with implementation beginning in 2013. Brazil had to make considerable changes to its internal system for handling trademark applications, which took time, but ultimately the country joined in 2019. Finally, Chile began implementation in 2022, becoming the most recent country to join.

Being part of the Madrid System also brings benefits to the participating trademark offices, not just to trademark holders. One major advantage is that the designated national offices are not responsible for examining formalities or classifying goods and services, this responsibility lies with the International Bureau, managed by the World Intellectual Property Organization (WIPO)[5]. Moreover, the International Bureau handles the collection and transfer of fees to the respective designated countries, which significantly streamlines administrative processes.

IV. Current Latin American Landscape

1. Cuba, 1995

Cuba, which operates under the first-to-file principle, with certain exceptions as defined in international treaties, has found a crucial ally in the Madrid System for strengthening its trademark protection framework. This international system introduced the concept of international priority, allowing trademark owners to better secure their rights on the island. In addition to the option of registering trademarks domestically under the Paris Convention, holders can also choose the international route via the Madrid Protocol, an alternative that greatly simplifies access to the Cuban market.

The adoption of the system has not only benefited foreign rights holders, making the registration process smoother and reducing processing times thanks to the commitments made by the local office when joining the Madrid System. This procedural efficiency is especially important given the current context of diplomatic and economic relations, where the effective protection of intangible assets plays a key role.

2. Colombia, 2012

When Colombia officially joined the Madrid System, it took a strategic step that marked a turning point in its trademark management on the global stage.

Since then, Colombia has seen a notable increase in subsequent designations related to Madrid registrations. It is particularly striking that 44% of these designations stemmed from registrations filed before Colombia joined the system, emphasizing the retrospective relevance of those earlier registrations in today’s intellectual property landscape. The remaining 56% of designations are tied to registrations filed after Colombia’s accession, indicating growing international recognition of Colombian trademarks.[6]

This trend reflects not only Colombia’s adaptability to international IP standards, but also its ability to leverage global opportunities through the Madrid System. By integrating into this global network, Colombia has significantly strengthened its IP infrastructure, enabling local entrepreneurs and businesses to reach international markets more easily, thus fostering innovation and economic development within the country.

This context illustrates how Colombia’s participation in the Madrid System provides not only protection and procedural benefits, but also helps position the country as a key player in the global intellectual property field.

Colombia’s incorporation into the Madrid Protocol revived regional discussions about accession and served as an incentive for other countries, Brazil, Chile, and Mexico in Latin America, as well as Jamaica and Trinidad and Tobago in the Caribbean, to consider joining as well.[ii]

Colombia continues to consider new members annually and evolves constantly to face new challenges and improve service for its users. Its contribution has been fundamental in both respects. The experience of Colombia’s Superintendence of Industry and Commerce (SIC)[7] in implementing the Madrid Protocol has served as an exemplary model for other offices both within and outside the region. Additionally, Colombian officials actively participate in technical meetings focused on the legal development of the Madrid System and have, on numerous occasions, led these discussions.

3.  Mexico, 2013

In 2013, Mexico joined the Madrid System, a move that had significant repercussions across the country’s entire trademark framework, impacting businesses, institutions, and existing regulations alike. Since then, the number of designations involving Mexican trademarks has seen moderate growth. In 2014, there were approximately 1,700 designations, a number that rose to around 1,870 by 2023.[8]

A noteworthy fact is that nearly 46% of all designations involving Mexican trademarks under the Madrid System came from registrations already existing prior to Mexico’s accession in 2013. This highlights the importance of the treaty’s retroactive effect for the country. The remaining 54% were associated with registrations made after Mexico joined the system. This increase in subsequent designations reflects the growing internationalization of Mexican trademarks and their use of the Madrid System to protect intellectual property rights across various global markets.[9]

As a result, Mexico’s accession has led to a gradual but steady rise in trademark designations processed by the Mexican Institute of Industrial Property (IMPI)[10] in its capacity as the Office of Origin. This upward trend reflects both the importance of the Madrid Protocol for Mexican trademark holders and their increasing integration into global markets.

4. Brazil, 2019

Even before implementation, Brazil’s National Institute of Industrial Property (INPI)[11] undertook significant improvements to adapt its operations to the Madrid Protocol’s requirements, with a particular focus on streamlining processing times for applications. To fully implement the system, the office introduced additional operational adjustments, many of which are still being enhanced today. These included upgrades to processing systems, the creation and revision of operational procedures, and a review of relevant regulations.

These changes yielded positive outcomes, significantly improving the review and granting times for trademark applications and related procedures. This is especially beneficial for trademark holders and companies seeking to enter the Brazilian market.

The Madrid Protocol has made it possible to introduce several significant effective changes for the internationalization of Brazilian trademarks, especially key aspects that promise to transform the landscape of trademark protection abroad: simplification of bureaucratic processes, estimated reduction in total operational costs, and faster registration procedures. These improvements not only facilitate access to international trademark protection, but also boost the competitiveness of Brazilian trademarks on the global stage.

Brazil’s accession to the Madrid Protocol marks a milestone, with the potential for long-term positive changes in both trademark internationalization and the national economy. The agreement simplifies and expedites the international registration of Brazilian trademarks and also encourages foreign trademarks to enter the Brazilian market.

This strategic move was expected to spark a wave of international applications through INPI, reflecting a substantial increase in trade flows and foreign direct investment. As more brands seek protection in Brazil, the business volume of local enterprises and employment across various economic sectors is positively impacted.

In short, Brazil’s integration into the Madrid Protocol represents an evolution in administrative efficiency and a strong push for global integration, helping Brazilian brands strengthen their presence in key international markets.[iii]

5. Chile, 2022

Chile is now celebrating two years as a member of the Madrid Protocol. The National Institute of Industrial Property (INAPI)[12] serves as the receiving office for up to 400 monthly trademark applications. To date, over 8,500 designations have been received.[13]

Implementation has posed challenges for local rights holders, primarily due to issues with the electronic application platform. INAPI is actively working on improvements. The system includes the option of “expert processing”, which allows applications to proceed without further review by the Office of Origin. This helps speed up their transition to WIPO and into the Madrid Monitor system[14], a centralized and secure hub for submitting and managing international applications and registrations. This benefit applies whether or not “expert processing” is selected.

Another ongoing challenge is educating users about whether to choose the Madrid System and understanding the typical timeline for trademark registration. Efforts are increasing to inform rights holders of the process, its phases, and benefits, always paired with tailored legal advice to determine whether an international filing is advisable.

As of its second anniversary, 125 applications had been filed through INAPI as the Office of Origin, many of which were already registered in multiple jurisdictions.

The protocol’s implementation in Chile has been positive overall. The local office has launched its own publication, the “INAPI Gazette,” and created a fully automated communication system with WIPO, a unique development globally.

In trademark applications, it is common for the local office to raise objections to adjust the coverages according to local regulations. A priori, this should not be a problem in the long term. However, a difficulty arises for foreign applicants who choose Chile as a destination through the Madrid Protocol, since they only have one opportunity to correct objections related to the required coverages. In contrast, national applications allow multiple opportunities (up to four or more) to adjust the descriptions of goods and services. There is ongoing work to improve the Madrid Goods and Services Manager, aiming to optimize internal processes and better serve trademark holders. However, unless this issue is resolved soon, the gap could lead to significant difficulties for international applicants, as the correction of objections could be decisive for the success or usefulness of your registration. Moreover, in some cases, the objected content of the coverage could be fundamental or the main reason for the application in question. Therefore, the exclusion of some specific element of the application could discourage applicants from registering trademarks in Chile, especially through the Madrid Protocol.

That said, Chile’s adoption of international IP practices is expected to continue fostering a more competitive and dynamic environment for Small and Medium Enterprises (SMEs)[15], allowing them to expand abroad more efficiently and securely. These regulatory shifts have not only spurred innovation and entrepreneurship within Chile, but also positioned the country as a strong destination for foreign investment and international trade.

INAPI continues to offer updated training sessions and is committed to assisting anyone needing help with international trademark filings, showing a strong commitment to innovation and intellectual property development in the region.

V. How Are the Discussed Countries Connected?

In the medium and long term, the implementation of the Madrid Protocol has the potential to bring about significant transformations in the business landscape of the countries that adopt it. This international treaty, administered by WIPO, simplifies and streamlines the trademark registration process across multiple jurisdictions through a single centralized procedure. This efficiency leads to reduced costs and shorter processing times for companies, enabling them to expand their international presence more quickly and effectively.

According to studies and analyses conducted by WIPO on the impact of the Madrid Protocol, companies that leverage this system experience a notable strengthening of their competitiveness in the global marketplace. By facilitating the protection of trademarks in multiple countries through a single procedure, local companies are better positioned to compete on equal footing with more established international players, which in turn drives exports and expansion of their operations.

Furthermore, the adoption of international trademark protection standards not only benefits individual companies but also helps to enhance the overall perception of an entire region as an attractive destination for investment and international trade. By establishing a stable and predictable legal environment for intellectual property, countries implementing the Madrid Protocol can attract foreign direct investment and promote sustainable economic development over the long term.

The integration and application of the Madrid Protocol not only simplifies administrative procedures for businesses but also contributes to creating a more dynamic environment for innovation and technological development. This positions local economies more competitively on the global stage and attracts investment flows that support regional economic growth.

A clear reflection of this trend is evident in the data presented in the 2023 Madrid System Yearly Review, which highlights substantial designations originating from certain middle-income countries targeting the top 10 designated Madrid members.

 

As noted in the Madrid System Yearly Review, which covered ten middle-income countries, the most prominent sector in terms of designations was research and technology. This result highlights the growing significance of these areas in developing economies, where investment in research and technological advancement are key pillars for promoting sustainable economic growth and global competitiveness.

Additionally, healthcare emerged as the second most significant sector in nine of the analyzed countries. This finding reflects the priority these countries place on improving health systems and social well-being as essential elements of their human and economic development. Strengthening healthcare infrastructure and improving access to health services are crucial to ensuring population well-being and fostering the right conditions for long-term socioeconomic progress.

These findings indicate a global trend toward investment in sectors that not only drive economic growth, but also contribute to the integrated development of societies, laying a solid foundation for future prosperity in middle-income countries.

VI. Near Future

Since 2003 and 2004, the Madrid Protocol has been expanding across Latin America, with two significant milestones. First, the United States joined the system in 2003, enabling U.S. applicants to designate member countries for international trademark protection. This move was highly impactful, considering the economic weight of the U.S., and it opened new opportunities for other countries to consider accession. Second, beginning on April 1, 2004, Spanish was adopted as an official working language of the Madrid System. This made the tool significantly more attractive to Spanish-speaking countries and users.[iv]

These developments marked a crucial turning point, facilitating easier export of products and services for Spanish and Portuguese-speaking users. Not only did this expand commercial opportunities for Latin American companies in international markets, but it also strengthened their integration into the global intellectual property system.

The U.S. accession and the adoption of Spanish sparked renewed interest among Latin American countries in the Madrid Protocol. However, as more countries join the system, implementation challenges have emerged that must be addressed to ensure full access to the system’s benefits for Spanish and Portuguese-speaking users.

Consolidating industrial property through the Madrid Protocol represents a major step forward in adapting to global times. The goal is to explore the potential impacts of these regulatory changes on the economic and commercial contexts of Latin American countries, highlighting a promising future for the protection and promotion of trademarks in a globalized market.

Andean countries, Caribbean jurisdictions, and Southern Cone countries are all actively assessing the possibility of joining the Madrid Protocol in the near future. However, these moves are conditional upon legislative developments that would enable such a transition.

There are various concerns among trademark offices, governments, and trademark owners’ representatives about the increase or decrease in workload and the myths surrounding the trademark application process under the Madrid Protocol. Nonetheless, experiences in countries like Colombia and Mexico have shown that the transition is manageable, and that long-term benefits far outweigh the initial challenges.

Indeed, the adoption of the Madrid Protocol in these markets followed a normal learning curve, with adjustments to procedures and early uncertainties overcome. The benefits have been clear and tangible, offering rights holders a more efficient and cost-effective route to international protection, thereby enhancing their competitiveness on the global stage.

VII. Conclusion

Looking toward the future and anticipating trademark protection through the Madrid Protocol will be beneficial for trademark holders in the long term. Over the lifespan of a company, many events may arise that require adapting the scope of trademark protection.

In 2023, a notable 8.8% increase in subsequent designations through the Madrid Protocol was observed compared to 2022.[1]

The participation of more Latin American countries in the Madrid Protocol not only promotes harmonization and administrative simplification in trademark protection, but also fosters a more favorable environment for foreign investment and international trade. Ultimately, these legislative developments can play a crucial role in integrating the region into the global economy, positioning Latin American countries as key players in the global protection and promotion of intellectual property.

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[i]         Yearly Review of the Madrid System (2024), published by the World Intellectual Property Organization (WIPO), available at https://www.wipo.int/publications/es/details.jsp?id=4735&plang=ES

[ii]        Los primeros diez años de Colombia en el Protocolo de Madrid (2022), published by the Superintendencia de Industria y Comercio, Juan Rodríguez, Senior Legal Counsel of the Madrid Registry at WIPO, available at: https://www.sic.gov.co/ruta-pi/junio-2022/editorial-pi/los-primeros-diez-anos-de-colombia-en-el-protocolo-de-madrid

[iii]       Tabelas Completas dos Tabelas Completas dos Indicadores de Propriedade Industrial, by gov.br, available at: https://www.gov.br/inpi/pt-br/central-de-conteudo/estatisticas/estatisticas/indicadores-de-propriedade-industrial

[iv]       El Protocolo de Madrid y la perspectiva latinoamericana (2016), published by the portal abogados.com.ar, by Raquel Flanzbaum, available at: https://abogados.com.ar/el-protocolo-de-madrid-1-y-la-perspectivalatinoamericana/18922

El sistema internacional de marcas introduce el español como idioma de trabajo Ginebra (2004), Press release PR/2004/379 published by WIPO, available at the following link: http://www.wipo.int/pressroom/es/prdocs/2004/wipo_pr_2004_379.html

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[1] The Paris Convention, adopted in 1883, applies to industrial property in its broadest sense, including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications and the repression of unfair competition. This international agreement was the first important step in helping creators to protect their intellectual works in other countries.

[2] The Madrid system of international trademark registration is governed by the Madrid Agreement, adopted in 1891, and the Protocol relating to that Agreement, adopted in 1989. The system allows a trademark to be protected in a large number of countries by obtaining an international registration that has effect in each of the designated contracting parties.

[3] The Madrid System Yearly Review provides an overview of the number of international trademark applications and resulting international registrations processed through the Madrid System administered by WIPO. It also reports on the extent to which right holders use these international registrations to protect trademarks for specific goods and services and to extend their geographical coverage, as well as on the maintenance of international registrations over time. This Review is published yearly by WIPO, duly updated with data from each trademark office.

[4] Data according to The Madrid System 2024 Yearly Review.

[5] WIPO is a specialized agency of the United Nations System, created in 1967 with the signing of the Convention establishing the World Intellectual Property Organization. WIPO is dedicated to promoting the use and protection of works of human intellect. https://www.wipo.int/portal/en/index.html

[6] Data according to The Madrid System 2024 Yearly Review.

[7] The Superintendency of Industry and Commerce (SIC) is a public agency attached to the Ministry of Commerce, Industry and Tourism of Colombia, responsible for ensuring the proper functioning of markets through the monitoring and protection of free economic competition, consumer rights, compliance with aspects concerning legal metrology and technical regulations. It is responsible for the protection of personal data, manages and promotes the Industrial Property System and settles disputes that may arise in the event of any particular rights related to consumer protection, unfair competition matters and industrial property rights. In any case, it is the Colombian competition regulatory body. https://sedeelectronica.sic.gov.co/

[8] Data according to the Madrid System Yearly Review.

[9] Data according to the Madrid System Yearly Review.

[10] The Mexican Institute of Industrial Property (IMPI) is a decentralized public organization with legal capacity and its own assets and with the legal authority to manage the industrial property system in Mexico. https://www.gob.mx/impi

[11] The National Institute of Industrial Property (INPI) (in Portuguese Instituto Nacional da Propriedade Industrial) is an autarkic public agency of Brazil created in 1970, under the orbit of the Ministry of Development, Industry and Foreign Trade (Brazil), whose mission is to execute at the national level, the rules that govern Industrial Property, taking into account its social, economic, legal and technical function. It also has among its attributions to pronounce on the convenience of signing, ratifying and denouncing conventions, treaties, covenants and agreements on industrial property. Its predecessor was the National Department of Industrial Property (Brazil) https://www.gov.br/inpi/es

[12] The National Institute of Industrial Property (INAPI) is the agency responsible for the management and care of industrial property services in Chile. It is also responsible for promoting the protection provided by industrial property and disseminating the technological heritage and information available to it. In January 2009, it began its activities as the legal successor of the Industrial Property Department of the Ministry of Economy (DPI). INAPI contributes to the innovation strategy promoted by the Government of Chile, generating efficient systems for the use and protection of industrial property rights, promoting innovation, entrepreneurship and the transfer of knowledge to the community. https://www.inapi.cl/acerca-de/inapi

[13] Information referred to by INAPI in its 2023 public account rendering, in 2024.

[14] The Madrid Monitor is an online platform that tracks and registers all international trademarks filed under the Madrid System. https://www3.wipo.int/madrid/monitor/es/

[15] A Small and Medium-Sized Enterprise (SME), according to the definition provided by the Chilean Ministry of Economy, is one with annual sales between 2,400 UF and 100,000 UF per year.

[16] Data according to the Madrid System Yearly Review.