How to Register an International Trademark: The Madrid Protocol

An increasing number of American companies and individuals are pushing to access global markets and put their goods and services in international commerce. There are of course a myriad of logistical legal maneuvers that must be made when operating abroad but perhaps among the most important is obtaining international trademark protection. Indeed, a common misconception is that obtaining a USPTO trademark is sufficient for global Trademark enforcement. While obtaining trademark registration in the USPTO is sufficient to protect one’s TM rights in the United States, it does not reach across US borders and consequently, competitors outside of the US may be perfectly within their legal rights to use your trademark along with similar goods and services.

There are a couple of options available to organizations or individuals domiciled in the United States who want to register their trademark in countries abroad.

If the trademark applicant lives in a country that is a member of the Madrid Protocol, that individual may choose to:

First file a trademark in the “base country” (US for US domiciled Applicants) and then file an international application through the Madrid Protocol.
File a trademark application directly with the trademark office of the specific country the Applicant is interested in pursuing trademark protection

Each option has its own factors and details that applicants should consider before choosing which way to go. We’ll cover the basics here, but as always, be sure to talk to a trademark attorney experienced in international trademark law before making a final decision.

WHAT IS THE MADRID PROTOCOL?

The Madrid Protocol is one of two treaties that constitute the Madrid System and is governed by the International Burea of the World Intellectual property Organization (WIPO) based in Geneva, Switzerland. Fundamentally, the idea behind the Madrid Protocol is to provide a trademark-filing framework whereby a group of Countries all agree to honor the trademark rights of an applicant who has filed a trademark application in one centralized Office. So, rather than requiring an applicant to file individual trademark applications in the trademark offices of 10 different countries, the applicant only needs to file one application. Clearly, this provides the massive advantage of saving the trademark applicant tremendous cost savings and logistical support (the applicant no longer needs to hire an attorney from each respective country). To date, more than 120 countries have signed the Protocol, including Canada, Cuba, Japan, Australia, Israel, the United States, and many others.

To cement the importance of this Agreement, let’s consider the example of a US-based company that has already obtained a trademark registration from the USPTO and now wants to expand its operations and obtain trademark protection in the countries of Cuba, Egypt, Finland, Canada, and Brazil. Prior to the advent of the Madrid Protocol, this company would have been required to seek local counsel in each of these countries (do you know how to reach a trademark attorney in Egypt?), work directly with the trademark office of the given country, and pay a separate application fee directly to the trademark office of that country. The attorney fees alone in hiring local counsel from five separate countries would be astronomical. However, under the Madrid Protocol, this American applicant can sidestep the laborious process of navigating through the legal market and filing offices of each country by having his/her American trademark attorney file a single application from the US.

Importantly, this streamlined process and cost savings system also extend to name changes, trademark assignments, and mergers that a Trademark holder might need to undertake in the future. An applicant who owns an International Registration can simply pay for a single renewal fee to WIPO to address trademark renewals in all countries for which there is an International Registration designation, rather than again, having to file renewals in each the separate trademark Office of each respective country.

Finally, it is worthwhile to note that under the Madrid Protocol, an applicant can file an international trademark application based on a Pending, rather than Registered trademark application in the base country (US). This affords the applicant a priority date that is potentially much earlier than what would otherwise be available. Applicants who live outside of the US must also first file in their “Origin Office” before availing themselves of the Madrid Protocol.

Many entrepreneurs and business owners in Europe are increasingly turning to the Madrid Protocol to expand protection in countries throughout the world. Here are a few examples of “Origin” trademark offices which can be used as the predecessor launch site before filing under the Madrid Protocol.

UK: IPO (Intellectual Property Office)
Germany: DPMA (Deutsches Patent- und Markenamt)
France: INPI (Institut National de la Propriété Industrielle)
Spain: OEPM (Oficina Española de Patentes y Marcas)
Italy: UIBM (Ufficio Italiano Brevetti e Marchi)

Remember, the “Origin” office undertakes the task of first evaluating the procedural viability of the trademark application (and objecting to those applications with defects) and then once approved, forwarding the Application to WIPO for review.

WHAT IS A TRADEMARK FOR PURPOSES OF AN INTERNATIONAL APPLICATION?

Fundamentally, the international community views “trademarks” precisely the same way the US understands trademarks. Trademarks, on the most basic level, are branding devices which when attached to the sale of a product of a service, distinguish the source company behind the product or service. Examples of Trademarks which are eligible for protection include:

Names
Logos
Slogans
Patterns
Shapes
Packaging
Sounds

While certain countries may have more idiosyncratic rules about specific criteria (for example, not every country has the same view on what qualifies as a “Descriptive trademark”), the fundamentals are the same.

REQUIREMENTS FOR FILING AN INTERNATIONAL TRADEMARK UNDER THE MADRID PROTOCOL

To secure an International Registration, an applicant must demonstrate a bonafide jurisdictional right and connection to the Protocol member country; this may be in the form of citizenship, domicile, or through the maintenance of a commercial establishment within the country.

Principally, an Applicant is only eligible to apply for an international Trademark once an existing trademark application or registration already exists within the applicant’s home country. For example, as soon as an American applicant files his/her trademark application with the USPTO, he/she is ready and eligible to file under Madrid Protocol and select the countries he/she wishes to obtain trademark protection in.

When filing the international trademark application, the is required to indicate one or more countries for which International Registration coverage is sought from the list of member-countries. Please Note: it is critical that the Goods/Services in the International Trademark Application are congruent with the Goods/Services listed in the base application or registration from the base-country. (“Goods and services” may be more narrow, but they may not extend beyond the identification of “goods and services” in the applicant’s home-country application or registration.)

LIST OF COUNTRIES PARTY TO THE MADRID PROTOCOL

Afghanistan

African Intellectual Property Organization (OAPI)

Albania

Algeria

Antigua and Barbuda

Armenia

Australia

Austria

Azerbaijan

Bahrain

Belarus

Belgium

Bhutan

Bosnia and Herzegovina

Botswana

Brazil

Brunei Darussalam

Bulgaria

Cambodia

Canada

China

Colombia

Croatia

Cuba

Cyprus

Czech Republic

Democratic People’s Republic of Korea

Denmark

Egypt

Estonia

Eswatini

European Union (EU)

Finland

France

Gambia (the)

Georgia

Germany

Ghana

Greece

Hungary

Iceland

India

Indonesia

Iran (Islamic Republic of)

Ireland

Israel

Italy

Japan

Kazakhstan

Kenya

Kyrgyzstan

Lao People’s Democratic Republic

Latvia

Lesotho

Liberia

Liechtenstein

Lithuania

Luxembourg

Madagascar

Malawi

Malaysia

Mexico

Monaco

Mongolia

Montenegro

Morocco

Mozambique

Namibia

Netherlands

New Zealand

North Macedonia

Norway

Oman

Philippines

Poland

Portugal

Republic of Korea

Republic of Moldova

Romania

Russian Federation

Rwanda

Samoa

San Marino

Sao Tome and Principe

Senegal

Serbia

Sierra Leone

Singapore

Slovakia

Slovenia

Spain

Sudan

Sweden

Switzerland

Syrian Arab Republic

Tajikistan

Thailand

Tunisia

Turkey

Turkmenistan

Ukraine

United Kingdom

United States of America

Uzbekistan

Viet Nam

Zambia

Zimbabwe

FILING AN INTERNATIONAL TRADEMARK APPLICATION IN PRACTICE

After a company based in the U.S. has filed a trademark application with the USPTO, it may then submit an additional application for an International Registration through the USTPO Office (U.S. Patent and Trademark Office) based-upon the company’s U.S. application or registration. Within the international trademark application, the applicant may specify that it seeks an extension of trademark protection in the countries of, for example, Cuba and Canada, re-list the goods/services as they are described in the U.S Application, and pay the Madrid Protocol filing fee along with the respective filing fees of the Cuban and Canadian Trademark Offices.

Should this application pass an initial review for eligibility from the USPTO according to the requirements of 37 C.F.R. §7.11(a), it will then be sent to WIPO for a trademark search and again, eligibility analysis.

If WIPO finds that application complies with all requirements (no Likelihood of Consumer Confusion with existing marks), WIPO will then submit the application to the national trademark offices in Cuba and Canada. These offices will have up to 18 months or more to either approve or refuse the application in their particular country but such a rejection would not necessarily bar the admission of the trademark in the other assigned countries (a trademark application may be rejected in Cuba but accepted in Canada). In the event that the Country does not alert WIPO to the impermissibility of the applied-for trademark, the trademark will automatically be granted.

STEPS TO FILING A TRADEMARK UNDER THE MADRID PROTOCOL

File a Trademark Application in a “Base-Country” such as the United States through the United States Patent and Trademark Office (USPTO)

Navigate to the USPTO’s Madrid Protocol Trademark Application Portal

Input the Serial Number of the US Trademark Application

If the original Trademark Application was a Standard Character Mark, designate whether or not you’d like to substitute a Color Mark

Designate whether or not you’d like to limit and/or exclude any of the goods/services listed in the US trademark Application and if so, for which Countries

Select which countries you’d like to extend protection through the International Trademark Application

If the European Union is among the list of countries, designate whether or not you’d like to claim Seniority and the specific language designated as the “second” language for communication with the EU

Designate whether or not you’d like to claim priority based on an earlier filing(s)

Designate whether or not you will be using a WIPO International Burea account to pay the fee or the USPTO’s financial systems

Input the Administrative information (owner name, address etc.) of the Applicant

Input the Administrative information (owner name, address etc.) of the Attorney of Record

12.Submit the International Trademark Registration Fees and the USPTO Certificate Fees

WHEN DOES IT MAKE SENSE TO FILE AN INTERNATIONAL TRADEMARK UNDER THE MADRID PROTOCOL?

Remember, a central advantage of the Madrid Protocol is the massive cost-saving opportunity; an Applicant can file one application in one consolidated manner in one centralized office. However, the actual application can be expensive and thus is only worthwhile to file if the trademark applicant intends to seek protection in multiple countries. Typically, I advise my clients to use the Madrid Protocol when filing in at least 4 countries. Please bear in mind, the strength and viability of the International Trademark is a function of the viability of the home-country trademark so if it is not obvious that you will continue to sell goods/services in the home country (thereby losing your trademark rights in said country), it may be best to file directly in the foreign country(s).

WHEN DOES IT MAKE SENSE TO SKIP THE MADRID PROTOCOL AND FILE AN APPLICATION DIRECTLY IN THE HOST COUNTRY?

If the trademark applicant is only seeking to register a trademark within a single foreign country, then filing a direct application with that country’s trademark office will usually, although not always, be more cost-effective. Remember, the Madrid Protocol Application can get expensive because of the Application’s base-fee (before even designating any countries) and while this fee may very well be worthwhile for Applicants filing in many different countries (thus “spreading out the base fee”), the fee will be more challenging to justify if the Applicant seeks protection in only a single country. Similarly, if an Applicant has access and operational infrastructure already set up in the target country, it should not be excessively burdensome to to interface directly with that country’s trademark office.

MY INTERNATIONAL TRADEMARK HAS BEEN ACCEPTED AND PROCESSED: NOW WHAT?

Similar to restrictions and maintenance-of-use obligations associated with the USPTO, International Trademarks under the Madrid Protocol also demand certain upkeep requirements. For nearly all of the Countries party to the Madrid Protocol, a mark must be used within five years of the registration date. As a corollary, marks that have obtained registration cannnot NOT be used for a continuous period of more than five years. Please remember, International Trademark registrations are tethered to the Trademark application/registration of the base-country for an initial period of five years; if the base application or registration is canceled (abandonment/opposed etc.), the International Trademark will also be subject to cancellation. International Registrations are valid for an initial period of ten years and may be renewed an unlimited number of times, for consecutive ten-year periods.

Extension of Registration

If you file and intend to renew through the Madrid Protocol, there are a few special rules you need to follow in addition to existing U.S. trademark registration rules. When a U.S. based trademark registration is filed through the Madrid Protocol, it is called an “extension of registration” (rather than simply a registration.) This means that you must meet both the U.S. based regulation requirements and the regulatory requirements of the World Intellectual Property Organization. Failure to do one or the other could mean a loss of the trademark.

When renewing your trademark, you must, therefore, submit the relevant papers and fees to the World Intellectual Property Organization nine years and six months after the trademark was issued, and submit an affidavit to the USPTO by the day that marks ten years since the initial filing. This gives you additional time to file your affidavit and confirm that your trademark is still in use within the United States.

MITIGATE COMMON PROBLEMS ASSOCIATED WITH FILING AN INTERNATIONAL TRADEMARK WITH THE MADRID PROTOCOL

To recap, the “Madrid Protocol” is a globally utilized system of filing that permits Protocol members to submit filings in more than one jurisdiction through a centralized process.

The Protocol system frequently costs less and proves simpler to use than the experience of filing in each country one by one. That said, an array of issues can arise with which a Madrid Protocol applicant may grapple. This is especially true when this applicant seeks to expand protection within the United States.

Several of these concerns may make themselves known during the application process itself. These include issues centering around the likelihood of confusion, as well as concerns over ownership and identification.

Still, other problems may surface after the granting of registration, including renewal timeframes and abandonment problems.

When an applicant properly makes use of the Madrid Protocol, and when he or she fully understands U.S. trademark law, the applicant (i.e. owners of trademarks from abroad) can more effectively establish a brand in America.

Here’s a brief work-through in circumventing a refusal of an application for a U.S. trademark by way of the Madrid Protocol system.

Correctly identify the trademark’s owner when completing a Madrid Protocol application.

More often than not, Madrid Protocol applications are hampered by a failure to include complete information regarding trademark ownership as entered into the filing.

During the filing of a Madrid Protocol, the legal representative who handles the form must take care to correctly insert every detail of the information surrounding ownership.

A high volume of refusals of Madrid Protocol filings occurs merely because the ownership information was incorrectly completed.

When submitting an International Trademark, the applicant is required to include the following information:

the state or country of the applying entity
the citizenship of the applying entity
the owner’s full name
the type of entity (if the owner qualifies as an organization)
a mailing address

If the information is incorrect or fundamentally incongruent with the US base-application, it will very likely be rejected. A Madrid Protocol refusal from the USTPO centering around ownership issues would read similar to this example:

“INDEFINITE ENTITY INFORMATION – CLARIFICATION REQUIRED”

Be sure that the “goods and services” mentioned in a Madrid Protocol filing are not too broad in scope.

Again, please remember, International Trademark Applications are based upon pre-filed base-country applications. If the Goods/Services now listed in the International Trademark are decidedly different from the Goods/Services listed in the base-country trademark application (submitted to the USPTO), the application will very likely be rejected.

For example, if the International Trademark application expands the scope of the goods/services in such a way as to grab coverage that is truly beyond what the base-country granted in the original application, the trademark application will be rejected. This is

The United States Patent and Trademark Office (USPTO) mandates that the specification of services be limited, clear, and specific and the USTPO notoriously applies a standard far more rigorous than that of the majority of countries elsewhere around the globe.

Because of this, an application’s identification of goods or services must be streamlined for U.S. trademark approval, even if a broader range of goods and services may pass muster in your country of origin.

US Trademark Applications which rely on Intent-to-Use 1(b) must continuously satisfy the 1(b) requirements

In the event that an International Trademark application is based upon a US Application that is a 1(b), Intent-to-Use, it is critical that the Applicant continues to make a good faith effort to use the mark in commerce for all of the listed Classes and associated goods/services. If the applicant is derelict in this duty, the International Trademark application, which as we know is based on the US Application, may run into some problems (“lack of bona fide intent to use the mark in U.S. commerce, etc.”)

Ensure your International Trademark will not Trigger a Likelihood of Confusion rejection based on an existing trademark application in the foreign-country

Remember, the crux of trademark law is the avoidance of Consumer Confusion. Trademarks must, therefore, be sufficiently distinct vis-à-vis the goods/services listed in the application AND may not be too similar to existing trademarks. Please be sure to conduct a trademark search of the foreign country’s trademark office and vet your prospective trademark against what already exists. To conduct this Likelihood of Confusion analysis, consider both the similarity between the marks and equally important, the similarity of the associated goods/services.

Maintain use of the Base-Country’s Trademark

This cannot be stressed enough – the success of the International Trademark is tied to the continued viability of the base country’s trademark. If the base country’s trademark is abandoned, the International Trademark may be subject to cancellation. How can a US trademark go abandoned? A number of different ways. If the mark has not been used in commerce for three consecutive years post-registration, the mark is considered officially “Abandoned”. Similarly, trademarks can go abandoned if they have not been renewed and/or if they have been subjected to a cancellation proceeding in TTAB.

Renew Renew Renew your International Trademark!

From the moment the mark has been recorded in the International Register, the trademark is valid for a period of ten years. Under the Madrid Protocol, the trademark may be renewed either before the ten year period is up or within six months of the expiration of the 10 year period (considered a “grace period”). The fees associated with the renewal process may vary according to the which countries have been assigned in the application but no matter what, the applicant will have to pay the base fee of 653 Swiss Francs.

The Protocols for How Legal Action Should be Handled within the Madrid Protocol are Unclear.

In general, the Madrid Protocol holds that any trademark infringement litigation should occur in the court system of the country where the infringement occurred. However, the U.S. does reserve the right to conduct legal proceedings in their own court system, so long as they attempt to honor the court system in the country where the infringement took place. The U.S. government also reserves the right to award damages, even in cases where the infringement occurred internationally.

Madrid Protocol: How Much Does an International Trademark Cost?

Unfortunately, the answer is the ever-frustrating – “It Depends.” Remember, the Madrid Protocol allows for a centralized application but the applicant still needs to pay the government filing fees of each country (or block of countries) for which admission of the trademark is sought.

Basically, the formula for Calculating the Price of an International Trademark under the Madrid Protocol (assuming the base country is in the USA) is as follows:

USPTO Processing Fee of $100.00 + WIPO Fee of $653.00 Francs + Gov. Fee of Contracting Country

Below is the Fee Calculator Provided by WIPO:

fee calculator

list of countries

fee details

International Trademark Classes

WIPO requires every trademark application to specifically designate the Class/s under-which the products/services listed in the application are assigned. This of course makes sense; there are millions and millions of products/services in circulation and the only way to catalog all of the variations of products/services in any sort of coherent way, these products must be satisfactorily ordered. These classes can range to include bowling balls to jewelry to accounting services to mobile phones. Depending on how many different categories of products/services an Applicant plans on selling, the number of Classes listed in the Application will vary.

This is indeed a very serious matter as the rights bequeathed by the trademark extend only to those categories of products listed in the application and their assigned classes. Thus, the more International Classes Trademarks have, more robust the protections.

TRADEMARK CLASSES EXPLAINED

The need to understand trademark classes isn’t simply related to securing maximum protection. It’s also meant to simplify the registration process – which in turn can save you time and money. Prior to submitting a trademark application, you should perform a trademark search. This allows you to ensure that your trademark won’t be confusingly similar to another. With almost 500,000 U.S. trademark applications filed each hear, a trademark search is becoming increasingly important.

By classifying each trademark into a specific category, the USPTO makes its database far easier to search. When using the Trademark Electronic Search System (TESS), you can narrow your results down by using classes. Keep in mind that an overly narrow search could overlook registered trademarks that may block your application. So a search should include all categories you believe your product or service may fall into.

When explaining trademark classes, it’s also necessary to consider trademark cost. Here are the trademark fees you can expect:

TEAS Plus: $250
TEAS Reduced Fee (TEAS RF): $350
TEAS Regular: $400

For almost every trademark application that we file, we are able to utilize the lower $250 government filing fee. Keep in mind that these fees are per class. This means if you’re filing a TEAS RF application encompassing the apparel and purse classes, your government filing fee will be $700. Filing a trademark for abstract use is also not allowed. Your trademark must either be in use, or you must have a bonafide intent to use it in the near future. While these fees may seem costly, failing to fully protect your trademark rights can be even more damaging if it leads to trademark litigation.

Although application requirements become less strict as fees become higher, every application must meet the minimum filing requirements. If your application fails to do so, it will be rejected. Additionally, you’ll be required to pay an additional fee if you file a TEAS Plus or TEA RF registration without meeting the appropriate requirements.

TRADEMARK CLASSES LIST

Your trademark description will need to be more in-depth than a single class heading, but these are the 45 classes of goods and services you get to choose from. A full explanation of each of these categories – along with what qualifies under the classes – can be found here. You can also search your goods or services to see what classes they fall into with suggested descriptions here: Trademark ID Manual.

CLASSES OF GOODS

Class 1: Chemicals
Class 2: Paints
Class 3: Cosmetics and Cleaning Preparations
Class 4: Lubricants and Fuels
Class 5: Pharmaceuticals
Class 6: Metal Goods
Class 7: Machinery
Class 8: Hand Tools
Class 9: Electrical and Scientific Apparatus
Class 10: Medical Apparatus
Class 11: Environmental Control Apparatus
Class 12: Vehicles
Class 13: Firearms
Class 14: Jewelry
Class 15 : Musical Instruments
Class 16: Paper goods and Printed Matter
Class 17: Rubber Goods
Class 18: Leather Goods
Class 19: Nonmetallic Building Materials
Class 20 : Furniture and Articles not Otherwise Classified
Class 21: Housewares and Glass
Class 22: Cordage and Fibers
Class 23 : Yarns and Threads
Class 24: Fabrics
Class 25: Clothing
Class 26 : Fancy Goods
Class 27: Floor Coverings
Class 28 : Toys and Sporting Goods
Class 29 : Meats and Processed Foods
Class 30: Staple Foods
Class 31 : Natural Agricultural Products
Class 32: Light Beverages
Class 33 : Wine and Spirits
Class 34: Smokers’ Articles

CLASSES OF SERVICES

Class 35: Advertising and Business
Class 36 : Insurance and Financial
Class 37: Building Construction and Repair
Class 38 : Telecommunications
Class 39: Transportation and storage)
Class 40 : Treatment of Materials
Class 41 : Education and Entertainment
Class 42 : Computer and Scientific
Class 43 : Hotels and Restaurants
Class 44 : Medical, Beauty & Agricultural
Class 45: Personal

International Trademarks can get quite expensive as one includes more and more classes to one’s trademark application. Choose carefully.

HOW CAN I TRACK THE STATUS OF MY INTERNATIONAL TRADEMARK?

WIPO publishes all trademarks through its Madrid Monitor, which is principally a complete database containing the substantive and administrative data surrounding any given international trademark. WIPO does not charge for use of the database and does a reasonably good job updating it on a daily basis. Specific information that can be found using the Madrid Protocol for an Applicant’s International Application includes:

documents outlining refusals
confirmation of grants of protection subsequent to provisional refusals
statements of grants of protection where no notification of provisional refusal has been communicated
documents confirming that ex officio examination is completed but that a mark may still be opposed by third parties
decisions
abandonment notices

Using the Madrid Portfolio Manager , once can readily access PDF versions of these documents.

HOW LONG DOES THE INTERNATIONAL TRADEMARK LAST?

Your International trademark Application is good for a period of ten (10) years. Once the 10 year mark has passed, the applicant must file for a Trademark Renewal with WIPO. Please be aware, it is incumbent on the Applicant to keep track of the timeframe so please speak with an attorney who can monitor your trademark in a professional docketing system to stay abreast of the relevant dates. If the trademark period expires and you have not filed a renewal, the trademark will go abandoned and you will have to start the process all over again.

CAN I TRANSFER THE RIGHTS TO MY INTERNATIONAL TRADEMARK TO A ANOTHER PARTY?

You certainly can, although Trademark Assignments with WIPO can be challenging. Principally, you will need to first effectuate the transfer by way of an IP Assignment Agreement which is a contract between the Assignor and the Assignee, detailing the terms of the Assignment (fee, timetable, conditions etc.). Once this agreement is in place, the International Trademark holder can request a change of ownership through WIPO’s form MM5 through the Office of the Contracting Party. WIPO charges a recording fee of 177.00 Swiss Francs which translates roughly (and according to the exchange rates of that given day) to $180.00 US Dollars.

THE MADRID PROTOCOL: KEY TAKEAWAYS

The Madrid Protocol is a treaty that allows for a “common application” style trademark registration method for US-based companies. Instead of having to go through all of the various regional trademark registration systems throughout the world, the Madrid Protocol registers a trademark in many different countries as soon as the trademark is registered in the U.S.

International trademark law is governed by legislation called the Madrid System for the International Registration of Marks–hence the name “The Madrid Protocol.” The Madrid System was officially put into effect in 1891, and has been revised many times, in many countries, since then. The most recent version was ratified in 1996.

The Madrid Protocol Makes Your Life Easier

The Madrid Protocol exists in order to make the Madrid System more compatible with U.S. trademark legislation. The Protocol is an amendment to the Madrid Agreement, and both the U.S. and the E.U. participate in it. Since they signed on (in 2003 and 2004, respectively), the Madrid Protocol has been adopted by many more countries, eventually becoming the preferred way to register and protect trademarks internationally.

In order to apply for Trademark Registration through the Madrid Protocol, you must be a natural person or legal entity with a connection, by nationality or by residence, to one of the participating countries. The Madrid Protocol trademark applications, which are linked to the applications in the applicant’s home office, are sent to Geneva, Switzerland, to the International Bureau of the World Intellectual Property Office (WIPO). There, they are checked and entered into an international registry, which gets sent to trademark offices around the world, in all participating countries. The trademark offices in those countries can refuse or approve the application and have 18 months to do so. If the application is approved, the trademark is protected for ten years, from the original date of registration. After that, the application must be renewed. All approved applications are published in the International Gazette.

Disadvantages of Using the Madrid Protocol for International Trademark Registration

Because the Madrid Protocol increases the number of international trademarks, it also increases the chances of potential conflict, which means increased legal fees and court time. There’s another potential issue based on the timing of the Madrid Protocol. In essence, an international trademark registration from the US depends on the US base application and registration for the first five years. During those first five years, if the registration is in any way interfered with (withdrawn, canceled, restricted, successfully challenged, etc), it will be canceled by the International Bureau. Third parties, especially competitors, can attack and challenge the US base registrations in order to take down the international registration.

Advantages of Using the Madrid Protocol for International Trademark Registration

The central benefit of the Madrid Protocol is its centralized, expedited filing system. Having such a centralized, organized system cuts costs and saves massive amounts of time, especially since the 18-month time limit for approval or denial of an application is shorter than the time limit of many individual countries. Under the Madrid Protocol, the wait time for approval cannot be dragged out for as long as it would otherwise.

Speak with a Trademark Attorney

Filing an International Trademark under the Madrid Protocol correctly is important. Please feel free to reach out and request to speak with one of our trademark attorneys. We’re here to help.

Have a question? We want to know. Contact a Trademark Lawyer today.