An Overview Of Our International Trademark Registration Services

Madrid Protocol System For International Trademark Registrations

The Madrid Protocol, formally known as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, is a pivotal system for simplifying the process of international trademark registration. It allows trademark holders to protect their trademarks in over 100 countries through one centralized trademark application process.

Overview of the Madrid Protocol System

The Madrid Protocol provides a streamlined approach for registering trademarks in numerous member countries. By submitting a single application in one language, with one set of fees payable in Swiss Francs, applicants can significantly reduce the complexity and cost of securing trademark protections internationally. This system is administered by the World Intellectual Property Organization (WIPO), which centralizes the administration of these international registrations.

Once an international registration is granted, any subsequent administrative changes—such as renewals, assignments, licensing, or updates to the owner’s name or address—can be efficiently managed through WIPO. These changes automatically take effect in all designated member countries, simplifying ongoing management.

Despite the international framework of the Madrid Protocol, the protection it offers is a bundle of national rights. This means that each member country may still apply its own trademark laws to decide whether to grant or refuse protection to an international registration within its borders.

To qualify to use the Madrid Protocol, an applicant must first have a national or regional trademark registration or application (often referred to as a “home” registration or application) in a member country. This home registration serves as the basis for the international application.

An international registration under the Madrid Protocol is valid for ten years and can be renewed directly with WIPO for additional ten-year periods. Trademark owners have the flexibility to renew their registration up to six months before the term expires, or during a six-month grace period following the expiration.

Applications can be filed in English, French, or Spanish, providing flexibility irrespective of the originating office’s national language.

Practical Considerations In Using the Madrid Protocol System

The Madrid Protocol presents substantial advantages for businesses operating internationally or those planning to expand overseas, offering a cost-effective and efficient way to manage trademark protection across borders. However, the system’s intricacies and the unique legal landscapes of member countries can pose challenges. Therefore, it is essential for potential applicants to seek trademark counsel.

Madrid Protocol Trademark Application Procedures

The Madrid Protocol provides a pathway for U.S. trademark owners to seek international trademark protection efficiently through the United States Patent and Trademark Office (USPTO). Here’s a detailed overview of the process involved:

  • Foundation in a Basic Application or Registration: To begin, you must have an active U.S. trademark application (the “basic application”) or a U.S. trademark registration (the “basic registration”). This forms the foundation for the international application, ensuring that the trademark being registered internationally has already been vetted by the USPTO.
  • Filing the International Application through the USPTO: Unlike some procedures that involve direct submissions to international bodies, the international application under the Madrid Protocol is filed through the USPTO. The application must represent the same trademark and owner as listed in the basic application or registration, and can only encompass the goods and services already approved or pending in the basic application or registration.
  • Certification by the USPTO: The USPTO examines the international application to confirm its linkage to a valid basic application or registration and ensures that all applicable fees have been paid. Upon successful review, the USPTO certifies the international application and forwards it to the World Intellectual Property Organization (WIPO).
  • Review by WIPO: WIPO reviews the certified application to ensure compliance with the Madrid Protocol’s standards. If the application is approved, WIPO registers the trademark, publishes the registration in the WIPO Gazette, and issues a certificate of registration to the trademark owner.
  • Extension of Protection to Designated Countries: WIPO dispatches a request for extension of protection to each country or region specified by the trademark owner. Each designated jurisdiction will then assess the request according to its local trademark laws.
  • Responses from Designated Countries/Regions: Each designated country or region decides independently whether to grant or refuse protection. A positive response means the trademark is protected as if it were registered directly in that jurisdiction. In case of refusal, the specific country must inform WIPO within a predetermined period, usually 12 or 18 months.
  • Maintaining the International Registration: The international registration is maintained through WIPO and is initially dependent on the U.S. basic application or registration for five years. During this period, if the basic U.S. registration or application is cancelled or limited, the international registration will be affected similarly. The trademark owner has the option to renew their international registration every ten years, which can be initiated six months before the expiration date or within a six-month grace period thereafter through the eMadrid system.

This procedure under the Madrid Protocol allows U.S. trademark owners to manage international trademark protection more seamlessly and economically, providing a centralized mechanism to extend their brand’s reach globally. However, due to the complexities and potential challenges in different jurisdictions, it is advisable to consult with a trademark attorney to navigate these processes effectively.

The Madrid Protocol System & The USPTO

The United States Patent and Trademark Office (USPTO) plays a crucial role in facilitating international trademark registrations through the Madrid Protocol, serving in three key capacities:

Office of Origin: For U.S. trademark owners seeking international protection, the USPTO acts as the Office of Origin. The process begins with a “basic” application or registration in the U.S., which forms the foundation for any subsequent international application. The USPTO reviews this international application to ensure it meets the formal requirements of the Madrid Protocol, certifies it, and then forwards it to the World Intellectual Property Organization (WIPO) for further processing. This step is vital as it confirms the domestic legitimacy of the trademark before it can be considered for international protection.

Designated Contracting Party: When a trademark owner from another Madrid Protocol member country seeks to extend their trademark protection to the U.S., the USPTO acts as a Designated Contracting Party. WIPO forwards these international requests to the USPTO, which then evaluates them according to U.S. trademark law. This is similar to the examination process for a domestic trademark application. If the USPTO finds the trademark eligible for protection under U.S. law, it grants the extension. Conversely, if there are issues, the USPTO issues a provisional refusal, which is communicated back to the trademark owner through WIPO. The trademark owner has the opportunity to respond to or appeal this decision directly with the USPTO.

Administrator of International Registrations: In its administrative role, the USPTO’s Madrid Processing Unit (MPU) manages all correspondence with WIPO concerning U.S.-based international registrations. This includes handling renewals, recording changes in ownership, managing limitations or cancellations, and updating names or addresses associated with the registration. Effective management by the MPU ensures that all changes to the international registration are accurate and up-to-date, reflecting any new legal realities or changes in ownership.

These functions highlight the integral role of the USPTO in both facilitating the extension of trademark protection from the U.S. to other countries and managing incoming international trademark protections within the U.S. under the Madrid Protocol. This dual role ensures a seamless integration of U.S. trademark policies with international norms, providing a robust framework for trademark owners to protect their brands globally while also adhering to domestic standards.

US Trademark Registration For Applicants Outside the United States

Foreign-based applicants seeking trademark registration in the United States can indeed apply through the United States Patent and Trademark Office (USPTO) much like U.S. residents. They must follow the same procedures and adhere to the same U.S. trademark laws and regulations.

A key regulation that particularly affects foreign applicants is the requirement for representation by an attorney licensed in the United States. Effective from August 3, 2019, this rule mandates that all foreign-domiciled trademark applicants must have legal representation from a U.S.-licensed attorney to file and manage their trademark applications at the USPTO. This requirement was implemented to ensure that foreign applicants fully understand and adhere to the complexities of U.S. law and to streamline the application process by reducing communication barriers and misunderstandings about U.S. legal standards.

This legal representation is crucial not only for navigating the application process but also for addressing any legal challenges that may arise during the examination of the trademark or post-registration. Having a U.S.-licensed attorney helps ensure that all submissions meet the USPTO’s legal standards and can significantly improve the likelihood of a successful trademark registration in the United States.

Section 44 Trademark Applications

Section 44 of the United States Trademark Act provides a valuable pathway for foreign applicants to register their trademarks in the U.S., leveraging international agreements such as the Paris Convention for the Protection of Industrial Property and other international treaties. This section offers specific advantages to non-U.S. applicants seeking to secure trademark protection in the United States.

Advantages under Section 44: Priority Claims under Section 44(d): Foreign applicants can file a U.S. trademark application based on a foreign application filed within the last six months in their home country. This provision allows the applicant to claim the same priority date as the foreign application, which is a significant advantage in trademark law, where earlier filings can preclude later conflicting trademarks. The U.S. application must involve the identical trademark and cover the same goods and/or services as listed in the foreign application.

Registration Based on Foreign Registration (Section 44(e)): This subsection enables foreign applicants to file a U.S. application based on a trademark registration in their home country. A key benefit here is the exemption from demonstrating actual use of the trademark in U.S. commerce at the time of the U.S. registration. Typically, U.S. applicants must show use of the trademark in commerce to register their mark, but Section 44(e) provides an initial bypass of this requirement.

Ongoing Obligations: While Section 44(e) simplifies the initial registration process by not requiring proof of use in commerce, trademark owners must eventually demonstrate use of the trademark in U.S. commerce to maintain their registration. This involves submitting a specimen of use to the United States Patent and Trademark Office (USPTO) during the maintenance period.

Eligibility Criteria: Applicants utilizing Section 44 must be nationals of, domiciled in, or operate a real and effective industrial or commercial establishment in a country that is part of the international treaties that the U.S. recognizes. Additionally, all applications under Section 44 must be filed by an attorney licensed to practice in the U.S., ensuring proper legal representation and adherence to U.S. trademark law.

Integration with the Madrid Protocol: An interesting aspect of Section 44 is its compatibility with the Madrid Protocol. Applicants can base an international application under the Madrid Protocol on a U.S. application or registration filed under Section 44. This integration allows for streamlined multi-country registration, enabling trademark protection in various jurisdictions, including the U.S., through a single application process.

Section 44 thus not only facilitates U.S. trademark registration for foreign entities based on their home country registrations but also integrates with broader international trademark systems to enhance global trademark protection strategies

Section 66 Trademark Application – Extension of Protection to the United States

Section 66(a) of the Trademark Act pertains specifically to applications made under the Madrid Protocol for extending trademark protection to the United States. This pathway is utilized by individuals or businesses located in member countries of the Madrid Protocol who have already registered or applied for a trademark in their home country. Here’s how the process unfolds:

Filing the International Application: An applicant from a Madrid Protocol member country who wishes to extend their trademark protection internationally, including to the U.S., starts by filing an international application through their home country’s trademark office. This application should include a request for extension of protection to other member countries designated by the applicant.

Certification by the Home Country’s Trademark Office: The home country’s trademark office reviews the international application for compliance with the Madrid Protocol’s requirements. Once it is certified that the application meets these standards, it is forwarded to the World Intellectual Property Organization (WIPO).

Formal Examination by WIPO: Upon receiving the application, WIPO conducts a formal examination to ensure all Madrid Protocol stipulations are met. If the application is approved, WIPO proceeds to register the trademark and publishes it in the WIPO Gazette of International Trademarks.

Extension Request to Designated Countries: After registration, WIPO sends a request for extension of protection to the designated member countries, including the United States. This is where the application begins to resemble a national application process within these countries.

Examination by the USPTO: In the U.S., the USPTO treats this extension request similarly to a national trademark application. The USPTO examines the application to ensure it meets all U.S. trademark laws and regulations. If no issues are found, the trademark is granted the same protection as it would receive if it were directly registered in the U.S.

Possibility of Refusal: While the Madrid Protocol streamlines the application process for international registration, the protection of the trademark is still governed by the laws of each designated country. Thus, while a trademark may be protected in one country, it could be refused in another based on local trademark laws and requirements.

This Section 66(a) process under the Madrid Protocol offers a streamlined and efficient route for trademark owners in Madrid Protocol member countries to secure and manage trademark protection across multiple jurisdictions, including the United States. However, applicants must be prepared for the variability in the application’s success across different countries, as each country’s trademark office retains the right to refuse protection based on its own legal standards and practices.

Current Madrid Protocol Member Countries

Status on June 9, 2022
Afghanistan African IPO (OAPI) Albania
Algeria Antigua and Barbuda Armenia
Australia Austria Azerbaijan
Bahrain Belarus Belgium
Bhutan Bosnia and Herzegovina Botswana
Brazil Brunei Darussalam Bulgaria
Cabo Verde Cambodia Canada
Chile China Colombia
Croatia Cuba Cyprus
Czech Republic Democratic People’s Republic of Korea Denmark
Egypt Estonia Eswatini
European Union Finland France
Gambia Georgia Germany
Ghana Greece Hungary
Iceland India Indonesia
Iran Ireland Israel
Italy Jamaica Japan
Kazakhstan Kenya Kyrgyzstan
Lao People’s Democratic Republic Latvia Lesotho
Liberia Liechtenstein Lithuania
Luxembourg Madagascar Malawi
Malaysia Mexico Monaco
Mongolia Montenegro Morocco
Mozambique Namibia Netherlands
New Zealand North Macedonia Norway
Oman Pakistan Philippines
Poland Portugal Republic of Korea
Republic of Moldova Romania Russian Federation
Rwanda Samoa San Marino
Sao Tome and Principe Serbia Sierra Leone
Singapore Slovakia Slovenia
Spain Sudan Sweden
Switzerland Syrian Arab Republic Tajikistan
Thailand Trinidad and Tobago Tunisia
Turkey