Filing Under the Madrid Protocol Protects Trademark Rights Internationally

The Madrid Protocol, also known as the Madrid System for the International Registration of Marks, is an international trademark registration system administered by the World Intellectual Property Organization (WIPO) that allows a mark holder to register a trademark in multiple jurisdictions at the same time.  Filing a trademark under the Madrid Protocol can be difficult, as it differs significantly from a normal trademark filing with the United States Patent and Trademark Office.

Under the Madrid system, trademark holders that have an existing or pending registration in a member country can file for the extension of that registration into other member countries (called “Contracting Parties”) through a process called “designation.”  The fees for filing under the Madrid Protocol differ depending on the number of counties a trademark holder wishes to “designate.”  You can find a listing of the current fees in Swiss Francs here.  WIPO charges an approximately $638 filing fee for the initial registration and an additional $71 complementary fee charge per country included in the application, not including the additional designation fee that may be specified by each country and any supplementary fees for each class of goods or services beyond three.  WIPO provides a calculator to better assess these fees.

Once an application is received, WIPO will determine whether the application conforms to the Madrid Protocol’s filing requirements.  If the requirements are met, WIPO will publish the mark in the WIPO Gazette of International Marks and will send a certificate to the applicant.  If there are problems with the application, WIPO will respond with a Notice of Irregularity, which must then be corrected within a specified time. 

The date of priority for these international registrations is the date that the country of filing receives the applicant’s application, provided the international application is then received by WIPO within two months.  An applicant for a trademark in the United States can also claim international priority under the Paris Convention through the Madrid Protocol in their US registration provided an international application is filed with the USPTO within six months of the filing date of the basic application. 

Registration under the Madrid Protocol lasts for ten years and can be renewed for additional ten-year periods by paying a renewal fee to WIPO.  If you are contemplating filing for international trademark registration under the Madrid Protocol please contact an attorney with experience in this area. 

Comments

[amonika aggarwal]

If Country not a member of 0F Madrid Protocol how to proceed further for international filing of trademarks under madrid protocol

[Trademark attorney; trademark lawsuit; trademark registration; trademark filing; international trade]

With the reach of the Internet, no longer can an individual or other entity limit its market to one particular country, such as the United States. When selecting a brand and choosing to file a trademark or service mark, it is imperative to consider the markets in which you will use your mark and sell your goods or services. The Madrid Protocol has made it easier, and cheaper, than ever to acquire registration in numerous countries, along with the benefits that are inherent to that registration.

International trademark registration will help to reduce the unauthorized use of that mark following registration and provide remedies when the mark is infringed. In today's global economy, global brand protection is a must.