Normally, trademarks protect your intellectual properties only within the country or region that you file them.
While this works for most purposes, large international businesses often find the process exhausting. This is because each individual country has its own laws and regulations surrounding trademarks.
Worse, paying for translators and attorneys, and dealing with application fees, can quickly become an incredibly expensive process.
For that reason, many international corporations choose to follow an international agreement called the Madrid Protocol.
The Madrid Protocol is an international treaty that regulates and normalizes trademark law among the countries that have signed it.
In this article, we’ll give a basic overview of the Madrid Protocol, and show how you can register a trademark through the Madrid system.
We’ll also talk about the advantages of applying through the Madrid System instead of registering individually with foreign trademark offices.
Madrid Protocol Basics
At its core, the Madrid Protocol is a way for trademark holders to seek trademark registration in multiple countries by filing one international application.
This is usually done by filing additional paperwork with the U.S. Patent and Trademark Office (USPTO) after your U.S. trademark becomes registered.
This is called a filing for a “basic mark.”
The World Intellectual Property Organization (WIPO) reviews each international application carefully.
Those that they accept may seek trademark protections in the countries they applied for without having to file individual applications in that specific country.
In effect, if you've registered your mark with one member country (such as the U.S.), you can skip several steps when you decide to register with a second member country.
Keep in mind, however, that the Madrid Protocol only provides the path for seeking foreign trademark protections.
It is not a harmonization treaty, only an agreement to help standardize the trademark process.
For this reason, individual countries may still implement their own trademark laws.
In this way, registering your mark in one member country does not automatically mean that another country will approve your mark.
All countries reserve the right to make and enforce their own individual trademark laws.
For that reason, it's important to do your research on each nation’s trademark law before you file for an international registration.
What Are the Advantages of Having an International Registration?
The main advantage to filing through the Madrid System is cost.
Instead of paying for translations, fees, and legal help for several applications in different countries, you can pay for a single international application.
This single application must then gain the approval of both WIPO and any target nations you want to file in.
As an added benefit, many countries (including the U.S.) make it easy to file your application online, usually in the same place you'd file for a normal, non-international trademark.
In the U.S. for example, both are done on the USPTO's website.
Another major advantage of filing with the Madrid Protocol is speed. After WIPO receives your application, they have 12 to 18 months to make a decision.
Once WIPO does so, they'll send you a notification of registration immediately.
Remember, however, that each individual country still has the right to review and reject your application should it not follow their individual trademark laws.
Your mark must gain the approval of both the International WIPO Bureau and the trademark office in individual country you named in your application.
Common Questions
Below we'll answer three common questions about the Madrid protocol.
These questions can help you understand the basics of the who and how of the process, as well as provide a general timeline for renewing your mark.
Where does the Madrid Protocol apply?
In total, the Madrid protocol applies to over 101 countries, encompassing 80% of the world's trade.
Remember, all of these countries have their own individual trademark laws. However, in most cases each agrees to treat trademarks that have gone through the Madrid System as valid within their borders.
Additionally, many Madrid Protocol members also subscribe to the NICE agreement.
This is an agreement which regulates trademark classes, creating a system similar to that used in the U.S. and Europe.
This has the effect of making international trademarks universally legible, reducing the chance of category confusion.
For example, trademark for leather goods in the U.S. will generally also count as a trademark for leather goods in Germany.
This is because in the NICE classification system all leather goods fall under Class 18.
Who can apply for International Registration?
In order to apply for an international registration, you need to fulfill a few basic requirements:
- First, you must have a connection to a nation that has signed the agreement. In most cases, this means that your business must be located in the country in question.
- Second, you must have filed for, or obtained, a mark with that nation’s trademark office. In the United States, this means filing a trademark with the USPTO. This is called your “basic mark."
- Finally, you must be able to afford all the relevant fees. These will vary considerably from mark to mark, so make sure you use WIPO’s fee calculator to determine your expected fees well in advance of filing.
The fees can add up quickly. For example, there can be extra costs depending on your trademark's classification and where you're planning to register.
As a general example of where your money will go, we can look at this sample case:
Ben's leather company is doing really well in the U.S., and he wants to start expanding internationally. For this reason, Ben wants to register his mark in both Mexico and the United Kingdom. These are two hot markets where he thinks his products will sell well. In Ben's case, the basic registration fee for his mark will be around $675 (converted to USD). Meanwhile, registering with Mexico and the UK individually will cost another ~$400 in fees. Therefore, just paying the international registration fees will cost Ben between $1,000 and $1,100. This is in addition to any costs associated with registering his basic mark with the USPTO, as well as any related attorney fees. With these costs included, you can estimate for a total cost between $3,500 and $5,000 to register a single mark with the USPTO and WIPO.
How long does my International Registration last?
Your international registration will last for ten years from the date of filing.
If you wish to continue using your trademark internationally, you will need to file for a renewal before those ten years are up.
Unlike a U.S. trademark, you don't have to demonstrate that your mark has been in use for those ten years. However, you will have to pay an additional renewal fee.
Remember that you need to maintain your base mark throughout this process.
If you abandon your U.S. trademark, WIPO will automatically cancel your international registration.
Filing for an International Trademark
In the U.S., it's actually pretty easy to register an international mark. You simply need to apply for international registration online.
In fact, you can do so before your trademark has been fully registered in the U.S.
The only requirement is that you either already have a mark, or are in the process of filing for one. You can find the full application online on the USPTO website.
If WIPO needs more information to process your application, they'll send you a document called the Notice of Irregularity.
This is basically a request for additional information, similar to the Office Action for U.S. trademarks. You can use the USPTO’s online form to respond to this request.
Conclusion
For international businesses, registering trademarks through the Madrid Protocol is an excellent way to protect your trademarks.
In addition to being less expensive than registering individually with several different national offices, the Madrid System is easy to use and has a relatively quick turnaround time.
However, just like registering a normal trademark with the USPTO, you're likely to run into complications when dealing with each country's specific regulations.
For this reason, it's always recommended that you hire an experienced trademark attorney to look over your application.
