International Trademark: Madrid Protocol | Romano Law

International Trademark: Madrid Protocol

Trademarks are valuable business assets, and as such, owners must consider the best ways to protect them from infringement. Federal, state, and common law provide some protection, but those do not apply internationally. Every country has its own trademark rules, which makes it challenging for businesses that want to enforce their rights globally. The Madrid Protocol can make this process substantially easier. However, companies should consult legal counsel to evaluate whether the Madrid Protocol is an option available to them and the benefits it may offer.

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What Is the Madrid Protocol?

The Madrid Protocol is an international treaty designed to simplify and centralize the international trademark registration process. Registrants can file a single application in their home language and pay one set of fees to apply for protection in up to 123 countries. Notably, the Madrid Protocol only addresses the application; it does not guarantee trademark approval in each country an applicant selects for trademark registration. Those countries will review and approve the registration under their respective laws.

How Do You File a Trademark Application Under the Madrid Protocol?

The application process involves several steps, starting with your home country.

Stage 1: Application Through Your National or Regional IP Office

In the U.S., first an application to federally register a trademark must be submitted with the U.S. Patent and Trademark Office (USPTO). The international application is then submitted to the USPTO electronically using the Trademark Electronic Application System for International Applications (TEASi). Once the USPTO examines and certifies the application, it will then be forwarded to the World Intellectual Property Organization (WIPO). The international application must specify which countries under the Madrid Protocol you would like to seek trademark protection in.

One advantage is that the international registration process can begin immediately without waiting for approval of the U.S. federal registration.

Stage 2: Formal Examination by WIPO

WIPO reviews the international trademark registration applications. Upon WIPO’s approval, a certificate of the international registration will be issued.  Meanwhile, WIPO will notify the respective intellectual property offices in the countries selected on the application. Although WIPO’s approval does not guarantee trademark registration in all selected countries nor guarantee trademark protection, an international registration is valid for 10 years once registration is obtained.  Another advantage is that the international registration can be renewed at the end of each 10-year period directly with WIPO.

Stage 3: Substantive Examination by National or Regional IP Offices

Each country applied for will review the submitted application and make a decision to approve or deny within 12-18 months, depending on the country. A country’s decision may be challenged, subject to the laws in that country. Acceptance or refusal in one country does not affect other countries.

Should You Register Under the Madrid Protocol?

Generally, if you want trademark protection in a country covered by the Madrid Protocol, it is beneficial to file under that process. The chief advantage of the Madrid Protocol is the ability to file one application in your own language rather than spending time submitting separate applications to multiple countries. It also can save money because there is only one application fee, with the caveat that some countries may require additional fees upon approval for registration.

However, if you need registration in a country that is not a party to the Madrid treaty, you will still need to pursue that independently. While 123 countries are covered, several countries including Mexico, Brazil and much of the Middle East are not treaty members.

While an international trademark registration has many benefits, the Madrid application process does not eliminate all problems with trademark registrations in a particular country. If there are legal issues, you may still need to hire local counsel to address them. In addition, if an international application is based on a U.S. federal registration and such U.S. registration is cancelled or rejected within five years of the application, the international registration is also cancelled. Another disadvantage to keep in mind is that all information on both U.S. and international registrations must match so classes of goods or services may not be added ore removed for different countries.

If there is a transfer of trademark ownership, there are subsequent steps to be taken to maintain the registrations. A request for the recording of a change in ownership must be filed with WIPO, which requires additional fees.

Conclusion

The Madrid Protocol offers valuable protection to trademarks to deter and obtain redress for infringement. International registration may not be necessary for every business. However, for many owners, it may be a good investment as it can be difficult to predict which trademarks may become known globally. If you are unsure whether to take this step, consult an experienced attorney about the best option for your business.

 

Photo by Gabriella Gould on Unsplash

 

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