Intellectual Property Law – The Madrid Protocol Promotes Global Trademark Protections
State Bar Certified Specialist, Franchise & Distribution Law
American based companies wanting to protect their trademarks internationally have been able to do so fairly easily since 2003, when the United States adopted the Madrid Protocol.
The Madrid Protocol is an international treaty currently recognized by 84 countries. It allows a U.S. based business that has a pending trademark application or registration in the U.S. Trademark Office apply to register the identical mark in other member countries of the Protocol, using a fairly simplified procedure.
The benefits of using the Protocol are fairly extensive. Instead of applying to register a mark separately in various countries, the applicant can file one application with the US Trademark Office which then automatically gets sent to the countries designated.
You no longer need to hire local trademark counsel in individual territories (unless objections are raised to the application at any stage). You also pay for the applications in US currency, thereby eliminating the need for wire transfers. Once an international registration is issued, there is also a simplified process to renew the trademark and a simplified manner to record address changes and other information, such as a sale of the mark to other parties. In addition, after an international registration issues, it’s possible to request an extension of protection to other member countries without having to start the process again.
Which countries are members of the Madrid Protocol? They range from Albania, Bhutan and China, to Uzbekistan, Vietnam and Zambia – but you can access the complete Madrid Protocol List of Countries here. Application fees vary by country.
Your Trademark: Meeting International Requirements
Your international application must be based on a U.S. (or local) application or registration, called a “basic application” — you cannot file internationally without it.
- The mark and the owner of the international application must be the same as the mark and the owner of the basic application.
- The international application must include a list of goods and services identical to or more narrow than the list on the basic application.
- The applicant must pay the U.S. certification fees at the time of submission as well as the application filing fees for all countries to which protection is sought.
- The applicant must identify at least one Contracting Party for an extension of protection.
If the application meets these requirements, the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland, will register your mark, publish it in the WIPO Gazette of International Marks, and send you a certificate as the “holder of the international registration.”
The International Bureau will then notify the Contracting Parties you designated in the international application. The designated countries will then review the application (as they would review any other application filed directly with them). And if no impediments or objections are raised, a registration ultimately is issued and forwarded to the applicant.
Due to the pitfalls involved in this multi-step process, trademark owners are encouraged to consult with experienced trademark counsel to provide guidance on, explain the process and assist with filing the international application. And if any objections or impediments are raised during the prosecution, trademark counsel can also direct the applicant to local counsel in the countries involved for assistance.
Tal Grinblat is an Intellectual Property Attorney, and a Certified Specialist in Franchise and Distribution Law, as designated by the State Bar of California’s Board of Legal Specialization. If you have questions regarding intellectual property, trademark protection or franchising a business, call him at 818.990.2120.