The Madrid Protocol is a great option for startups who want foreign trademark protection but don’t want to file trademarks in separate countries.
If you want to have trademarks in the United States and in Europe, then (1) file your trademark application in the US and (2) within 6 months of your US filing file a Madrid Protocol application for International Registration (designating the European Community).
Madrid Protocol: Overview
Under the Madrid Protocol (an international system for the registration of trademarks), a U.S. trademark application or registration can be the basis for an international trademark application, thereby allowing for centralized filing and administration of an international trademark portfolio. Most industrialized nations (with the notable exception of Canada) are members of the Madrid Protocol. The United States became a member of the Madrid Protocol on 11/02/03, and the European Union became a member on 10/01/04. If you file a Madrid Protocol application within six months of your U.S. filing, then your international application will have the same filing date as your U.S. application (pursuant to Article 4 of the Paris Convention). Otherwise (e.g. for already registered marks), your international application will have the filing date of your international filing.
If international registration is important to you and if you want to maintain the benefit of your earlier filing date, then you should consider filing a Madrid Protocol application before the six-month deadline. You can always file international trademarks after the six-month deadline, but you will have lost the advantage of your earlier U.S. filing date by doing so.
Madrid Protocol: Advantages And Disadvantages
The Madrid Protocol’s main advantage is that it eliminates the high filing costs associated with filing separate national applications in each foreign country. The Madrid Protocol’s main disadvantage is that the rights granted by an international registration can be extinguished if its home application does not mature to registration or if its home registration is canceled during its first five years. This concept is commonly referred to as “central attack,” which is extremely rare and whose effects can be avoided by converting Madrid Protocol applications to national applications.
Another disadvantage of the Madrid Protocol is that the description of goods/services in the International Registration is based on the parent application. The United States requires more narrow descriptions of goods/service in trademarks than some other countries. As such, you may be able to secure broader protection by filing directly in those countries. However, if you file trademark applications in any country with broad descriptions of goods/services, you may end up inviting unnecessary conflicts with third parties. (In other words, if your trademark counsel drafts trademark applications like patent applications – starting with broad descriptions then narrowing them during the course of prosecution – then you are doing the equivalent of chest-thumping and are inviting conflict with third parties unnecessarily.) Wise trademark counsel should draft goods/services that are sufficiently broad to protect your trademarks while not causing confusion or conflict with trademarks owned by third parties.
The Madrid Protocol does for international trademark applications what the PCT system does for international patent applications (except that Madrid Protocol applications actually mature into substantive trademark rights, whereas PCT patent applications merely give the applicant the right to file for foreign patent protection). The World Intellectual Property Organization (WIPO) administers the Madrid Protocol.
Madrid Protocol: Costs
International filing fees are generally more expensive than U.S. filing fees. For example, Clock Tower Law Group’s fee is $1500/mark, and filing fees for the European Community are about $2500/mark (depending on currency exchange rates), so it’s safe to budget about $4000/mark for filing trademarks in Europe.
Madrid Protocol: Flow Chart
The following is an overview of filing a Madrid Protocol application designating the European Community:
- International Registration Received
- Formalities Check
- Absolute Grounds Check
- International Registration Refused On Absolute Grounds
- Absolute Grounds OK
- Opposition Period Open
- Opposition Pending
- International Registration Refused On Relative Grounds
- International Registration Accepted
- Removed From Register
- International Registration Decision Appealed
- Opposition Decision Appealed
The Madrid Protocol application process starts with the filing of an Application for International Registration with the USPTO. After the USPTO reviews the application, it will either certify the application and forward it to the International Bureau (IB) of WIPO in Geneva, Switzerland, or it will notify the applicant of any problems.
WIPO then issues an International Registration (IR), which is sort of like an international trademark application filing receipt. The International Registration is then forwarded to the designated international trademark offices, who determine whether the IR holder is entitled to an “extension of protection” (i.e. substantive trademark rights) in their region/country.
In Europe, a First Statement of Grant of Protection (GP1) issues after the trademark has been examined without objection by the examiner. A Second Statement of Grant of Protection (GP2) issues after the trademark has been published without objection by third parties.
The goal, of course, is to get to the “International Registration Accepted” step. In our experience, this occurs, on average, 12-17 months after the initial filing with the USPTO.
In Europe, use of the trademark should be established within five years of registration to prevent having the trademark canceled for non-use.
The term of trademark protection is 10 years from the date of the International Registration (IR), and (as with US applications), the IR can be renewed for subsequent 10-year terms.
Additional countries can be added at any time to the International Registration by filing a Subsequent Designation.
Assignments and renewals are all handled centrally via filings with WIPO, which makes managing your international trademark portfolio much more simple.
Madrid Protocol: Summary
In summary, the Madrid Protocol is a great choice for startups who want to secure protection for their trademarks in multiple foreign countries without the expense of managing multiple international trademark applications.
For more information, see:
- Office for Harmonization in the Internal Market (OHIM) – the European Union agency responsible for registering trademarks and designs in EU countries.
- United States Patent And Trademark Office (USPTO) – information about the Madrid Protocol.
- World Intellectual Property Organization (WIPO) – the international agency that administers the Madrid Protocol.
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