Obtaining Foreign Trademark Protection through the Madrid International Trademark System

WIPO-MP2The Madrid System provides a means for trademark holders to protect their marks in multiple countries through the filing of one application in a single office, in one language, with one set of fees, in one currency. This post will explain the advantages, disadvantages, process, and example costs when using the Madrid System.

The Madrid System is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks, and the Protocol Relating to the Madrid Agreement (the Madrid Protocol (MP)).  As of July 2014, 91 countries were members or contracting parties of the MP. While most industrialized countries are members, Canada is not. The International Bureau of the World Intellectual Property Organization (WIPO), in Geneva, Switzerland administers the international registration system of the MP.

Advantages
The benefit an MP application are especially apparent when seeking trademark protection in more than one foreign country. The benefits of an MP international application is that it is easily filed in one location (e.g. at USPTO) and you do not need to hire local attorneys in each country were you seek protection in order to file an application. Further if protection is approved in a particular country without objection by that country’s trademark office then there is no need to hire a local attorney at any point in the process. Renewals paid to one place (WIPO) at one time (every 10 years), so keeping track of differing renewal periods and requirements of various countries is not required.

Disadvantages
The international application and registration depends on a corresponding U.S. (basic) trademark application for the first five years. If within the first five years, the US trademark application/registration expires, is cancelled, or abandoned then the International Bureau will cancel the international registration. Yet, after five years, the international registration is independent of the basic application or registration. In many cases, when seeking protection in multiple countries, the advantages outweigh the disadvantages.

The Process at the USPTO
MP applications must be filed in a receiving office and cannot be filed directly at WIPO. The U.S. Patent and Trademark Office (USPTO) is a MP receiving office.

For a person or entity to file an MP application in the USPTO, the applicant must first file or have already filed a U.S. trademark application (or have received a U.S. Trademark registration) on the mark(s) before an MP application can be filed on that mark(s). Such a U.S. trademark application/registration is called a basic application/registration under the MP. The list of goods or services in the international application must be identical or narrower than the list of goods or services in basic application/registration.

A person or entity is eligible to submit an international application at the USPTO if the person or entity is trademark owner (1) having an application filed in or a registration issued by the USPTO and (2) who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the United States.

When to File?
If you file your international application within six months of filing your U.S. trademark application, your international application will be given the filing date of your earlier filed U.S. trademark application. You can file after the six month time period has expired, but in that case you will not receive the benefit of your U.S. application filing date.

Fees
The filing fees for a madrid protocol application comprise two parts fee: (1) the International Bureau fees and (2) certification fees charged by the USPTO. The USPTO charges a certification fee of $100.00, per class, if the international application is based on a single U.S. application or registration, and a certification fee of $150.00, per class, if the international application is based on more than one U.S. application or registration.

International Bureau (IB) charges fees based on (1) whether the mark is in black and white or in color, (2) the countries designated in the international application for trademark protection, and (3) the number of classes of goods and services provided in the international application. WIPO provides a fee calculator for determining in advance the International Bureau fees that a particular international application requires. The calculator provides two letter country codes [PDF] for selecting countries for protection.

For example, to file a international application under the MP through the USPTO based on one U.S. trademark application or registration showing the mark in black/white, having one class and designating the European Union (Office for Harmonization in the Internal Market (OHIM)) the government fees would be (as of July 2014):

USPTO Certification Fee: 100 USD
Basic International Application fee: 653 CHF (Swiss Francs)
European Union Fee paid to IB: 1111 CHF
Total government fees due at time of filing: ~2078 USD (at a 1:1.12 exchange rate of CHF to USD)

Certification By USPTO
After the MP application is filed at the USPTO, the USPTO will check the application to ensure the filing requirements are met (37 CFR 711(a)). If all of the filing requirements are met, the USPTO will certify that certain information in the international application is the same as the information in the basic application or registration. Then the USPTO will forward the international application to the International Bureau. If application does not meet the filing requirements, the USPTO will not certify the application and will notify the applicant.

Review by International Bureau
After the USPTO certifies the international application, the International Bureau will review the application to ensure it meets all the requirements of the Madrid Protocol. If the requirements are met and appropriate fees are paid, the IB will issue a certificate to the applicant, publish the registration, and notify the respective trademark offices of the countries that the applicant designated for trademark protection in the international application.

Review by Designated Countries
Each county where the applicant sought protection by designating that country/jurisdiction in the international application will review the contents of the international application under the local law of that country. If no objection is raised by the reviewing office of the respective country, the applicant will receive protection in that country. If an objection is raised by the reviewing office of a respective country, then a local attorney will need to be hired in those countries to evaluate and respond to the objection. Each designated country has 18 months to issue a refusal/objection to grant protection in that country. If a refusal is not issued within that time frame, then protection is automatically granted in that country.

Adding Countries
An owner of an International Registration can add countries to its registration by filing a subsequent designation request at the USPTO.

Term and Renewal
Protection under the international registration, in countries where protection was not finally refused, continues for 10 years from the date of registration. The registration can be renewed in subsequent 10 year periods by payment of a renewal fee to the International Bureau.

Conclusion
Filing a international trademark application under the Madrid Protocol may save money over hiring local attorneys to file in each local country directly, especially when seeking protection in multiple foreign countries. The centralized renewal fee feature of these application reduces the cost and complexity of maintaining foreign trademark protection making it a smart decision in many cases.

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