Madrid Yearly Review 2024 Focuses on Subsequent Designations in International Trademark Protection

The World Intellectual Property Organization (WIPO) recently released the 2024 edition of the Madrid Yearly Review, presenting an overview of facts, figures and analysis on international trademark registrations of the past year, with a special theme on "How registration holders have used subsequent designations to expand the geographical protection of their marks via the Madrid System".

The Madrid System, administered by the WIPO, provides a route for international trademark protection other than directly filing separate applications in each jurisdiction, by allowing registration holders to designate initially any Madrid member countries (currently 114 members) where protection is desired, and adding new Madrid members in the form of subsequent designations.

The report notes that from years 1978 – 2018, nearly a fifth (18.7%) of Madrid registrations have used subsequent designations to extend trademark protection. And in 2023, 64,335 subsequent designations were made, an increase of 8.8% year-on-year. For Madrid registrations recorded between 2005 and 2023, an average of approximately 5 Madrid members were designated subsequently per registration, with 39% of the subsequent designations made within 1 year and 78.6% within 4 years of their initial registration.

As to overall international trademark applications, in 2023, the number of applications, totaling around 64,200, fell by 7% year-on-year, marking the second year of decline following an exceptional growth of 15% two years prior in 2021. The UK (28,799), the European Union (EU) (27,936), the US (24,833), Canada (19,933), and China (18,923) attracted the most designations in the Madrid applications, while the US, with 10,987 applications, topped the list of country of origin of Madrid registrations, followed by Germany (6,613), and China (5,473). The US has held the top spot since 2015, and US holders' most common subsequent designations, between 2005 and 2023, were China, Japan and Korea.

L'Oréal of France, with 199 applications, remained top filer for the third year in a row in 2023, followed by BMW (124 applications), which has moved up 33 places to become the second top filer. As for types of goods and services covered by applicants' trademarks, class 9, as has been the case since 1985, was the most designated class in 2023, accounting for 11% of all applications. Class 9 includes mainly computer hardware, software and other electrical or electronic equipment.

For China, in 2023, China-based applicants filed 7.7% more Madrid applications than the previous year, and designated, on average, about 12 Madrid members in every application filed in 2023, compared with the average number of 7 designations made in Madrid applications filed by all origins combined. Between 2005 and 2023, the top three initial designations for registration holders in China were the US, Russia, and Japan, whereas top subsequent designations of the Chinese holders were Japan, the US, Vietnam, and Russia.