International Trademarks: Using the Madrid Protocol

 

Interested in an ‘International Trademark’? Keep reading. 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. Contact a Top Trademark Lawyer to discuss your details more fully.

International Trademarks

 

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.

 

International Trademarks: The Details Matter

 

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 regulation 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.

 

International Trademarks and the Fluidity of Centralization

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.

 

Disadvantages of Using the Madrid Protocol

Because the Madrid Protocol increases the amount of international trademarks, it also increases the chances for 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 cancelled by the International Bureau. Third parties, especially competitors, can attack and challenge the US base registrations in order to take down the international registration.

International Trademarks

 

Madrid Protocol: How Much Does it 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.  Contact a Top Trademark Lawyer to learn more.

 

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. Hopefully, it is now apparent to the reader just how complicated International Trademark Registrations can get.  Visit our Trademark Resource Center to learn more.

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