Trademarks are essential for businesses in virtually all industries, as they make it easier for customers to identify the business as the source of the products or services the business offers. The Madrid Protocol is an international treaty that allows business owners to protect their trademarks at the international level through a simplified and centralized registration process. While this international registration may not be necessary for all businesses, those who have commercial interests abroad should strongly consider protecting their trademarks through the Madrid Protocol. If you have questions about whether you should register your trademark internationally, or about any other trademark matters, you can learn more by contacting the team of San Francisco business attorneys at Von Rock Law by calling (866) 720-0195.
The Madrid Protocol is one of two treaties that govern international trademark registration––the other being the Madrid Agreement. According to the World Intellectual Property Organization (WIPO), the Madrid Protocol offers a convenient and affordable way to register and manage trademarks at the international level. Applicants can file a single international trademark application and pay a flat fee to apply for trademark protection in up to 130 nations. These trademarks can be modified, renewed, or expanded through a single centralized system, rather than going through these processes in each nation separately.
The applicant can file in their native language and pay in their local currency. In addition, there is no need to hire a local agent in each country to file the initial application. The Madrid Protocol only applies to the application, so it is important to note that there is no guarantee that the trademark will be approved or registered in each country listed in the application. Each country’s trademark registration body will review the application and has the right to approve or reject it under their local laws. If approved, the trademark is registered and protected in each nation the same way as would a mark registered through the local office.
The Madrid Agreement is the second treaty in the Madrid System for the International Registration of Marks. Established in 1891, the Madrid Agreement is the basis of this system and governs the whole. After its establishment, the Madrid Agreement was revised several times and amended in 1979. The Madrid Protocol was introduced a decade later, in 1989, to make the Madrid Agreement more flexible, and easier both to access and to bring into harmony with the domestic legislations of various countries. The Madrid Protocol has been the sole governing treaty for international trademark registration since 2016.
The main features of the Madrid System include:
- Convenience: The process of filing a single application in one language, with one set of fees, is extremely convenient for gaining trademark protection in multiple countries. Once approved, the trademark can also be conveniently managed through a central system and the protection can easily be expanded into new countries, as needed.
- Global: The Madrid Systems offers virtually worldwide trademark protection, as its member states comprise more than 80% of world trade.
- Cost-effectiveness: The application process requires relatively little time and money and is much more cost-effective than filing multiple applications in various nations. Applicants also do not need to pay for related services, such as translators or representatives in each country.
If you have questions about the international registration process through the Madrid Protocol, you can learn more by contacting the experienced trademark lawyers at Von Rock Law.
According to WIPO, applicants must go through five basic steps to apply for an international trademark under the Madrid System:
- Complete an international trademark application: The application may be completed electronically through WIPO’s Madrid Application Assistant. Once finished, the application should be downloaded in PDF format.
- Apply with the office of origin: The application must be filed through the office of origin in the applicant’s home country. For United States applicants, the application should be filed with the United States Patent and Trademark Office (USPTO).
- Formal examination: WIPO checks that the international trademark application meets all requirements. If it does not, WIPO will notify the applicant and their office of origin of the issue and how to correct it within a given time limit, typically three months.
- International registration by WIPO: If the application meets all requirements, WIPO registers the mark in the International Register, publishes it in the WIPO Gazette of International Marks, and sends the registrant an acknowledgment of compliance.
- Substantive examination: The mark is evaluated in a substantive examination by the office of each designated member state. Each office has the option to grant or refuse protection in either 12 or 18 months.
International trademark registrations have a date of recording. This is the date on which WIPO notifies the local Trademark Office about the international registration. The refusal time limit is calculated from this date. The Madrid Agreement and Madrid Protocol state that each office has an examination period of either 12 months or 18 months, and the office must decide whether to approve the application within this time frame.
Member states can obviously not begin their own examinations of any trademark application pursuant to their own laws until WIPO documents have been filed through the trademark applicant’s country of origin. Therefore, business owners wishing to gain some estimate of the likely time it may to move their trademark application through the international registration system may find it helpful to consult the list of annual and monthly (calculated as a rolling six-month average) pendency rates, provided by WIPO.
Protecting a brand at the international level is essential for companies with international business interests. Fortunately, the Madrid Protocol streamlines the trademark registration process and makes it easier for companies to obtain trademark protection in multiple international markets. However, meeting all requirements and obtaining full protection for your brand’s intellectual property can still present a number of complications. If you have questions about pursuing international trademark registration through the Madrid Protocol and whether it is a good choice for your business, consider contacting Von Rock Law’s San Francisco business lawyers at (866) 720-0195.