What is the Madrid Protocol?

By Josh Gerben, Esq.

The Madrid Protocol is an international treaty designed to simplify the international trademark registration process.  Using this process, registrants are able to complete a single application, in their home language, that can then be applied to over 90 member countries.  It is important to note, however, that this application will not grant global trademark protections.  While the Madrid Protocol simplifies the application process, it has nothing to do with approvals.  Those are still made on a country-by-country basis.

As a business owner in today’s global economy, you’ve likely considered international trademark registration.  Though the process to register internationally may seem overwhelming, with the Madrid Protocol, it may be easier than you think.  First, determine the countries where you need to register.  When developing your international trademark plan, consider where you are currently doing business, and where you plan to in the future.  Once you’ve decided where you need to register, you can begin the process to apply for trademark registration internationally.  Read on to learn more about how the Madrid Protocol works, along with the advantages and disadvantages of using the process.

How does the Madrid Protocol Work?

In order to submit an international application through the Madrid Protocol, you must first file a basic application with your home country’s trademark office.  If you live within the U.S., this would be the United States Patent and Trademark Office, or USPTO.  You do not need to wait until your application is approved by the USPTO.  Once you file your basic application, you are free to begin the process of international registration.

Using the Madrid Protocol, your international application will also be filed through your country’s trademark office.  They will then certify your application and forward it to the World Intellectual Property Organization.  WIPO will then review the application and send it to the trademark offices in the countries you’ve indicated on the application.

Again, the Madrid Protocol will not grant your trademark in every country for which you’ve applied.  Each individual trademark office will examine your application and make a decision based on their specific trademark legislation.  You should be notified by each trademark office within 12-18 months regarding approval or rejection.  Once approved, you will need to renew your trademark registration every 10 years.

The Advantages and Disadvantages of Using the Madrid Protocol

The most obvious advantage of using the Madrid Protocol is a simplified application process.  Completing one application in your home language is much easier than submitting an application with each individual country, especially if you plan to register in many countries at one time.  The Madrid Protocol often saves registrants money as well.  Though you will still need to pay a fee to each country where your trademark is ultimately registered, you will only pay one application fee.  In a basic filing, with few complications at the national level, this could greatly reduce the overall cost of your international filing.

Unfortunately, there are some significant downsides to the Madrid Protocol, as well.  Often, a trademark registration filed through this process can meet some legal hang-ups once it reaches an individual trademark office.  If office actions or oppositions are issued through a country’s trademark office, you may need to hire local counsel to assist you in responding and completing the registration.

In addition, your international applications are based on the basic application you filed with the USPTO.  This has a few implications.  The first is that your international registration cannot vary from your basic application.  Adding or removing additional classes is challenging, and later transferring ownership of the trademark even more so.  Second, your international registration is also tied to your U.S. registration for five years.  If at any time during that five year period, the USPTO cancels or rejects your trademark registration, your international registrations will be canceled or rejected as well.

Finally, not all countries around the world are members of the Madrid Protocol.  In fact, several key countries, including much of the Middle East and South America, are not a part of this international treaty.  To file your trademark in these and other non-member countries, you will need to file an application with each country’s trademark office directly.

Members of the Madrid Protocol

Madrid Protocol:  The Basics

A U.S. trademark registration offers valuable trademark protections essential to a business’s success.  These protections, however, only apply to trademark issues and disputes within the United States.  To gain trademark protections around the world, you must register your trademark internationally.  One way to easily apply is through the Madrid Protocol.  Once you’ve filed a basic application with the USPTO, you can complete a single application which can then be applied to any one of its over 90 member countries.  This may save you time and money, but it might also cause additional issues at the national level.  To learn more about if the Madrid Protocol is right for your business, contact an experienced trademark attorney today.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.