Just Following (Madrid) Protocol

As I advise clients on trademark issues, it is relatively common for clients to ask if there is an “international trademark”. I then break the unfortunate news that there is no such thing as an “international trademark”. Instead, registered trademark protections only extend to the national borders where the mark is registered. This means that if a client with a U.S. trademark wants registered trademark protection in Canada and Mexico, the client needs to apply for trademark protection in both Canada and Mexico.

              Luckily, there is the Madrid Protocol, which makes applying for trademark protection in several countries simpler. The Madrid Protocol is an international trademark registration system created through an agreement of 120 member countries. Through the Madrid Protocol, an applicant who has applied for, or received, trademark registration in one member country can apply for registration in other member countries at the same point. They can apply in one language, for a fee in one currency. This would make a difference for the earlier example, as individual applications to Canada and Mexico would require two applications, two languages, and two currencies. For Madrid Protocol applicants applying from the United States, the applicant submits an application through the United States Patent and Trademark Office (USPTO). The USPTO is then able to prepopulate the application with information that the applicant used for its U.S. trademark application. This makes completing the application process much simpler. Once the applicant submits the application through USPTO, the USPTO reviews the application and approves it if the application meets certain requirements. The USPTO then forwards the application to the World International Property Organization (WIPO). WIPO reviews the application, approves if the application meets requirements, and then sends the application to each member country the applicant selected on the application. Once it receives the application, each member country has 18 months to either approve or deny the registration. After 18 months, the applicant automatically receives registration in each country that failed to respond.

              Now that I’ve laid out the benefits, I would be remiss if I didn’t mention the downsides. If the original application is either refused, canceled, or withdrawn, then all the applications and registrations through the Madrid Protocol are canceled. Additionally, if a description of the goods or services narrows on the original application, the description narrows in the same way on the Madrid applications.

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