An international treaty known as the Madrid Protocol makes it easier to register trademarks in numerous jurisdictions with a single application. The Madrid Protocol is managed by the World Intellectual Property Organization (WIPO) and provides companies and individuals with a simple and affordable option to safeguard their trademarks across multiple countries.

How Does the Madrid Protocol Work? 

The Madrid Protocol enables trademark owners to file a single international application with the trademark office of their “home” country (known as the “office of origin”) to seek protection in multiple member jurisdictions. In many instances, application under the Madrid Protocol may be an easier and more cost-effective means of obtaining international trademark protection than filing national applications directly in each jurisdiction in which protection is sought.

Who is Eligible to Utilize the Benefits of the Madrid Protocol 

To utilize the benefits of the Madrid Protocol, you must have a connection with a Madrid Protocol member country and have a pending national trademark application or registration in that member country. A connection to a member country can be established by residing, being a national of, or having a business presence in a member country. Once you have an active application or registration in your member country, you can file an application through the Madrid Protocol system based on that registration.

The Advantages and Drawbacks of the Madrid Protocol

There are advantages and disadvantages of the Madrid Protocol system. While it provides a simple, cost-effective way to apply for and manage international trademark registrations, the level of protection that it offers may vary and the process does have some drawbacks.

Advantages of the Madrid Protocol

The main advantages of using the Madrid Protocol system to file an international trademark application are cost, ease of filing, and centralized management. You may apply for trademark protection in many regions with a single application in one language, pay a single set of fees, and manage your registrations through a single system.

Filing through the Madrid Protocol may be less expensive than filing national applications in different countries. For the international application, you only pay a single set of fees to the World Intellectual Property Organization (WIPO), which can save you money on application fees, legal fees, and translation costs.

The Madrid Protocol also gives you access to a large number of member countries, making it easier to protect your trademark across a big geographical area. It helps to quickly expand protection into additional markets.

In most situations, the Madrid Protocol system eliminates the need for document formalities and appointing local representatives in each designated nation.

Drawbacks of the Madrid Protocol

A trademark application filed through the Madrid Protocol system is dependent on the trademark application or registration from your home country. If your home application or registration is canceled or abandoned, in whole or in part, within five years of the date of the International Registration, the International Registration will be canceled to the same degree. If this occurs, you may be able to convert your international registration to national registrations, in certain circumstances.

Under the Madrid Protocol, the timeline for obtaining protection in each jurisdiction depends on the actions of both WIPO and the national trademark offices. Response deadlines for office actions might be relatively short, making it difficult to hire agents and file timely responses. Delays or issues at either level can slow down the registration process. The amount of time it takes to process applications can also vary greatly. Registration in some jurisdictions takes one to two years and is typically faster than a national application. However, for some jurisdictions, the timeframe is substantially extended.

Each country has its own trademark laws and requirements. It is important to be aware of any specific requirements of a country that you have designated on your international application. Failure to follow these requirements could risk the validity of your registration in that country.

How to File For an International Trademark 

In order to file an international trademark application under the Madrid Protocol, you must file the International Application with the Trademark Office of your home country/region, which corresponds to the "home" application or registration on which the International Application is based.

First, you should compile a list of countries in which you would like to seek protection. You should consider the countries in which you currently operate and those where you intend to do business in the future when devising your international trademark protection strategy. Once you have compiled your list, you should determine if they are all member countries of the Madrid Protocol. For any non-member countries, a trademark application would have to be filed directly with the national intellectual property office, usually with the assistance of local trademark attorneys. For member countries, an application for international registration is submitted through your home country’s intellectual property office. In the United States, this would be the United States Patent & Trademark Office (USPTO).

Are You Looking to File Your Trademark Internationally? 

An Intellectual Property attorney can help you make an informed decision on whether you should utilize the Madrid Protocol system to seek international protection for your mark. The trademark attorneys at Grant Attorneys at Law PLLC can offer you the guidance and legal advice you need to protect your trademark globally and maintain a global trademark portfolio.