• Cassandra L. Wilkinson

On Your Mark! The Madrid Protocol -- Filing For Trademark Protection Internationally


When protecting intellectual property internationally, often an applicant of a U.S. trademark application or registration will want to protect their mark in several countries, but is unaware of the applicable laws that govern the intellectual property of that country. An option that has become quite viable and saves the applicant time and money would be to file for protection within the Madrid Protocol.
The Madrid Protocol is system for registering international marks. In 1891, originally called the Madrid Agreement concerning The International Registration of Marks, the Agreement evolved with 1989’s Madrid Agreement and the system became a streamlined “protocol” for the operating of registering marks internationally officially starting on April 1, 1996.
In order to file within the Madrid Protocol, a country/state must be a member of the Paris Convention for the Protection of Industrial Property. Once you are considered a member you are called a “contracting party.” The contracting parties make up what is called the Madrid Union. The languages applications may be filed in are English, Spanish, or French. The Three types of applications that are filed internationally are Application by Agreement, Application by Protocol, or Application for Agreement and Protocol. In an attempt to make the filing much easier than filing each country individually, you may designate as many countries as you pay the fees to have protection in with the filing of one (1) application. The fees for filing through the Madrid Protocol are flat fees for each country. Essentially, instead of receiving various registration numbers for each country, you would be in receipt of one registration number, making the maintenance of the trademark seamless. Also, the designated countries benefit from being filed within the Protocol, as it will eliminate the need for each country’s intellectual property office to review and examine each application. Additionally, the applicant pays the fees through the Intellectual Bureau, not through each country. The International Bureau remits the country’s fees to each country, so they still remain profitable.
To file within the protocol, you must file the intended trademark application through your office of origin. For residents of the U.S. that would be United State Patent and Trademark Office (USPTO). The USPTO acts as a liaison to the International Bureau. A good example of this process would be similar to traveling via airplane internationally and upon arrival going through a customs agency before entering a particular country. Once through customs, the traveler (or trademark) will be designated per country without any other examination or additional fee or assigned number other than the original registration number. Per the Agreement, you may designate in every country accept for the office of origin. Once the trademark has been filed within the International Bureau, the applicant will receive filing notice from the designated countries. The countries then publish the mark and it will be open to opposition within each country’s designated time period. The applicant will receive notifications of opposition or results from search reports during this time.
If a trademark owner is interested in cost estimates for each country designation within the Protocol, the trademark owner may use the International Application Simulator, which will walk the applicant through the process and approximate the fees for filing in multiple countries at the following website: http://www.wipo.int/madrid/en/madrid_simulator/Step2.jsp.
The Madrid Protocol is constantly evolving in that when additional countries become part of the protocol, filing is more desirable for the applicant who wishes to protect the mark in many countries.
To find out more about the Madrid Protocol and the latest updates and information notices, visit the following website: http://www.wipo.int/madrid/en/general/.

#Trademarks #International

© 2017 Head, Johnson, Kachigian & Wilkinson, PC