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What is the Madrid Protocol?

On Behalf of | Jun 1, 2021 | Trademark Law

If you want to pursue trademark protection internationally, applying with the Madrid Protocol is an effective option. The Madrid Protocol is an international treaty that provides a single application system for obtaining and maintaining trademark registrations in over 100 countries. The Bureau of the World Intellectual Property Organization (WIPO) maintains the Madrid Protocol system. Currently, over 123 member countries have signed onto the Madrid Protocol. 

The Madrid Protocol only allows a person or company to apply for trademark protection. When you file an application with the Madrid Protocol, you are not guaranteed trademark approval in every country you select. Each country will review your application and can choose to approve the registration under their national laws. Applying the Madrid Protocol can save you time and money. Instead of having to file numerous trademark applications, you only have to submit one application.

Madrid Protocol Trademark Search

Before filing your international trademark application, applicants should perform a search on the Madrid Monitor. This process searches trademarks registered through the Madrid Protocol for identical or similar marks to marks that have already been registered in member countries. Through conducting this search, applicants can gauge how easy or difficult it will be to register their trademark in the countries they select on the international trademark application, modifying their strategy accordingly.

How to File a Trademark Application Through the Madrid Protocol

The Madrid Protocol application process involves multiple steps, beginning with your home country. The first step of the application process involves registering a trademark through your country’s national intellectual property office. If you are in the United States, you will need to submit a trademark application with the U.S. Patent and Trademark Office (USPTO). You will then need to submit your international application to the USPTO electronically through the Trademark Electronic Application System for International Applications (TEASi).

After the USPTO examines your application and certifies it, they will forward the application to the World Intellectual Property Organization (WIPO). Your international application needs to specify which countries you would like to seek trademark protection via the Madrid Protocol. You can begin the international trademark registration process immediately without waiting for your U.S. federal trademark registration to become finalized.

WIPO Will Formally Examine Your Trademark Application

WIPO reviews all of the Madrid Protocol international trademark registration applications. After WIPO approves your application, they will issue a certificate of international registration. Once they review your application, WIPO will notify the intellectual property offices in the countries you chose on your application. WIPO approving your application does not guarantee that you will receive trademark protection in all of those countries. Your international registration will be valid for 10 years after you receive trademark protection. At the end of the 10-year period, the international registration can be renewed.

Substantive Examination by National or Regional Offices

Every country through which you have applied for protection will review your application and decide to approve or deny it within 12 to 18 months of you applying, depending on the country involved. If a country denies your trademark application, it can be challenged according to the laws in that specific country. The refusal or acceptance of your trademark application does not affect other country’s decisions. In other words, one country may decide to deny your application, and another country may still choose to approve it.

Should You Register Your Trademark Under the Madrid Protocol?

You may be wondering whether you should file a trademark application through the Madrid Protocol. In most cases, if you would like to register for a trademark in one of the countries that participate in the Madrid Protocol, applying the Madrid Protocol is worth it. The chief advantage of filing for the Madrid Protocol is to file a single application in your language. You will not have to submit separate applications to multiple countries. You will also save money because you will only need to pay one application fee, although some countries require additional fees after your application is initially approved.

However, if you would like to register your trademark in a country that is not part of the Madrid Protocol, you will still need to pursue an individual trademark application. Even though 123 countries are covered under the Madrid Protocol, such as Brazil, Mexico, and countries in the United States. Additionally, applying the Madrid Protocol will not eliminate all of the problems you will have with trademark registration in individual countries. If you run into problems in Canada, for example, you will still need to hire legal counsel to help you with those issues.

What happens if your U.S. federal trademark registration is rejected or canceled within five years of your Madrid Protocol application? In that case, your international trademark registration will also be canceled. Another disadvantage of applying the Madrid Protocol involves the requirement for U.S. and international registrations to match. In other words, classes of goods or services cannot be added or removed for different countries. Your U.S. application is the same application other countries will receive. You will not be able to adjust your application to better suit the requirements of trademark laws in other countries.

Finally, if you transfer ownership of your trademark, you will need to take additional steps to maintain your trademark registrations. You can request a change of ownership through the WIPO, which will require additional fees.

Contact a Chicago Trademark Lawyer Today

The Madrid Protocol offers intellectual property owners international protection. International trademark registration is not always necessary for every business. However, pursuing protection through the Madrid Protocol is often an excellent investment to protect your intellectual property globally. If you have questions about whether you should seek protection through the Madrid Protocol, the intellectual property lawyers atAU LLC are here to help. Contact us today to request a consultation.