Using the Madrid Protocol to Protect Your Trademark Internationally

Do you have international ambitions for your business? Are you looking to expand the impact of your goods or services across different markets? Are you anxious about protecting your trademark outside U.S. borders? The Madrid Protocol offers a centralized, easy and efficient way to apply for trademark protection in ninety-seven countries. This article discusses the benefits of the Madrid Protocol, the application process, and some disadvantages.

What Is The Madrid Protocol?

The standardization of trademark protection across the globe continues to be a hotly-contested issue. In the absence of a cohesive approach applicable at an international level, countries have chosen to streamline the filing process across jurisdictions, which means trademark owners can petition for protection in multiple countries at once.

Via the Madrid Protocol, trademark owners can file a single application, in one language, and pay one set of fees to request protection in every signatory country. The Madrid Protocol offers a centralized filing and management procedure, where applicants can supply all needed information and manage their portfolios in one place. Unlike the European Union, the Madrid Protocol does not provide for a unitary registration system, so the appropriate authority in each country still needs to review and approve every application. However, by providing a centralized filing system, the Madrid Protocol streamlines an otherwise expensive filing process for applicants seeking registration in several countries at once.

Currently, ninety-seven countries are members of the Madrid system, which allows aspiring international expansionists to apply for trademark recognition in one hundred and thirteen territories. The Madrid System includes the United States, the member states of the European Union and the nineteen-member African Regional Intellectual Property Organization. Together, the member countries of the Madrid System (each known as a Contracting Party) comprise over 80% of world trade, and the Protocol has registered over 1.25 million marks, certainly attractive figures for businesses intent on going global. Canada is not part of the Madrid System. For a complete list of the countries that fall under the Madrid Protocol, see here.

What Is The Application Process For The Madrid Protocol?

The Madrid Protocol makes the route to international trademark recognition quite easy and intuitive. Here are the steps involved:

Search the WIPO global database. Flesh out potential conflicts by scanning the comprehensive trademark database supplied by the World Intellectual Property Organization.
File an application with the USPTO or the trademark office in another country. Each international application is linked to a “base” request in the applicant’s home country (known as the Office of Origin), so you’ll need to register your mark either through the USPTO or the trademark office in another country before you apply for international recognition under the Madrid Protocol. For more on the federal registration process through the USPTO, check out our article on the topic.
Submit your international application through the USPTO or the trademark office in another country. The international application may be narrower than the application in the Office of Origin, but it cannot be broader in scope. As a result, applicants are strongly advised to work with counsel to strategically identify the ideal country in which to originate their international trademark application. The Office of Origin, such as the USPTO, will confirm that your international application matches your domestic application, certify it and forward it to the WIPO in Geneva, Switzerland. Instructions on filing an international application can be found here, and the application itself can be found here.
WIPO will conduct a formal examination of your application. Once your application is approved, WIPO will record the mark in the International Register and publish it in the WIPO Gazette of International Marks. WIPO will send you a certificate of recognition to confirm your mark.
WIPO will notify the national offices of your choice. On your application, specify the markets in which you wish to receive trademark protection. Once your application is processed, WIPO will forward the relevant materials to those countries on your behalf.
National offices will make an independent decision. National offices will examine your mark and either approve or deny your application within 12 to 18 months. If accepted, they’ll issue you a statement of protection. If they refuse to protect your mark in full or in part, you can contest the decision. An adverse decision on the part of one country won’t affect other countries where you operate.
Your trademark is registered! Madrid Protocol protection is valid for ten years. At the end of those ten years, you can renew directly with the WIPO.

Are There Any Drawbacks To The Madrid Protocol?

For all its advantages, international registration through the Madrid Protocol may not be right for every trademark owner. Here are some aspects of the Madrid Protocol process worth noting:

Fees. The USPTO will charge you both for your original application and for certifying and submitting your international application to the WIPO in Geneva. The WIPO attaches its own set of fees as well (which must be paid in Swiss francs). While the Protocol allows you to subvert the need to file separate applications for each market you’re entering, it still can pose a hefty cost if you seek protection in several jurisdictions.
Conflicts. Expanding the reach of your mark necessarily poses a risk of running into conflicts. For more information on how to respond to a perceived conflict, consult the WIPO’s guidelines.
Lawsuits. While you won’t need to engage domestic lawyers when filing through the WIPO, any lawsuit brought against your company in another country will likely need to be handled by local counsel in that country (at premium prices).
Domestic contingencies. Since your international application is linked to your base application, revocation of domestic protection could pose problems. If your application with the USPTO is refused, withdrawn, cancelled or restricted at any time during the first five years you’re registered with the Protocol, the WIPO will cancel your international recognition. After five years, the two become independent. For this reason, the national application with the USPTO or trademark office in another country should be crafted with care to minimize the risk of refusal, cancellation or restrictions in the Office of Origin, particularly if the USPTO application is filed under an intent-to-use basis. In addition, given the additional scrutiny that the USPTO applies to trademark applications (as compared to other countries), some applicants may be better served by choosing another country as the Office of Origin.

Should I Register My Mark Through The Madrid Protocol?

While Madrid Protocol registration offers its share of benefits and drawbacks, the decision will ultimately depend on your business goals and your assessment of the risks involved. To discuss whether the Madrid Protocol is right for your business, contact us for a free consultation.

DISCLAIMER: The information in this article is provided for informational purposes only and should not be construed or relied upon as legal advice. This article may constitute attorney advertising under applicable state laws.