Trademark Law: The Madrid Protocol

While “Madrid Protocol” sounds like the name of a great spy novel or a new wave band from the 80s, it is in fact a treaty that allows applicants to search and register trademarks internationally. So if you have a United States trademark registration (or intend to get one) and your business is expanding into other countries, the information in this article is relevant to you.

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol” for short) is a treaty dating back to 1891 that allows countries who signed on and adopted its regulations to seek reciprocal registrations in other signatory countries. Under the Madrid Protocol, the holder of a valid and active registration or application can seek registration of that same mark in any other country that is party to the Madrid Protocol. Currently, 98 countries are signatories, meaning that a holder of a registered trademark in one of these 98 countries can seek protection of that mark in any of the other 97 countries. The list of countries is widely diverse ranging from Armenia to Ghana to Iran to Vietnam. The United States signed on to the Madrid Protocol in 2003 and the European Union signed on in 2004. Cuba has been a signatory since 1995, but it was only recently that American trademark owners were allowed to seek registrations there.

To take advantage of the Madrid Protocol, the holder of a valid U.S. trademark application or registration must file an application through the United States Patent and Trademark Office (“USPTO”) for international registration of their mark. In that application, the trademark owner must specify in which countries it wants to seek registration. The USPTO vets the application only to ensure that the application is fully completed; it does not review the application on the merits since this will be done by the receiving country. The application is sent on to the World Intellectual Property Organization (“WIPO”), which also reviews it and then issues an international registration. Once that is issued, WIPO then sends along the international registration and request for designation to Singapore for its review and approval.  

Note that even though at this point the applicant’s application has been reviewed and passed along by the USPTO and WIPO, the designated foreign country is under no obligation to automatically grant trademark protection. All applications are subject to the examination rules of each particular country, and any number of issues (including a likelihood that the mark will create confusion) can derail a Madrid application. The United States similarly applies its rigorous rules to applications filed by foreign applicants through the Madrid Protocol. If the application successfully survives the review process in a particular country, then the foreign registration is recognized and in effect in that country.

There are costs associated with a Madrid application, of course. The USPTO charges fees for applying for the initial international registration. WIPO charges additional fees for the designations to the various countries.  If you intend to seek foreign trademark protection in multiple jurisdictions, be prepared – the filing fees add up!

The Madrid Protocol has opened up much of the world to holders of U.S. trademark registrations and applications, and vice versa. It is a valuable and relatively inexpensive tool for obtaining international trademark registrations. If you would like to find out more about seeking and obtaining foreign trademark protection, please contact The Law Office of Chris Clark.

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