Have you heard of the Madrid Protocol in relation to trademarks? You are probably wondering what it is.
The Madrid Protocol is one of two treaties that comprises the Madrid System for international registration of trademarks. The Madrid protocol makes it possible to protect a trademark in a large number of countries by obtaining an international registration that is effective with each of the designated contracting parties. A Contracting Party is a country or intergovernmental organization that is a member of the Madrid Protocol.
An international trademark registration may be filed by a person or legal entity having a connection with the Contracting Party to the Agreement or Protocol through establishment, domicile or nationality. The mark may be the subject of an international application only if it has been registered with the trademark office of the Contracting Party with which the applicant has connections. This is referred to as the office of origin. Where all the designations are effected under the Protocol, the international application may be based simply on an application that was filed with the office of origin. The international application must be presented to the International Bureau of WIPO through the intermediary office of origin.
An international trademark registration must designate one or more Contracting Parties in which trademark protection is sought. Subsequently, further designations could be effected. A Contracting Party may be designated only if it is a party to the same treaty as of the office of origin’s Contracting Party.
Once the international application is received by the International Bureau, the Bureau carries out an examination in compliance with the requirements of the Agreement, Protocol and their Common Regulations. The examination is restricted to certain formalities, such as the classification and comprehensibility of the list of goods and services for the trademark. If there are no irregularities in the application, the International Bureau records the mark in the International Register, publishes it in the WIPO Gazette of International Marks and notifies each Contracting Party.
The international registration is effective in each designated Contracting Party from the date of the international registration. If no refusal is filed or issued within the applicable time limit or if a refusal is withdrawn, the protection of the mark is from the date of the international registration. This is the same as if it had been registered by the office of the Contracting Party. An international registration is effective for 10 years. It may be renewed for further periods of 10 years with payments of fees.
There are several advantages for this filing method. This provides a cost effective and efficient way for trademark holders to receive protection for their marks in multiple countries with the filing of just one application with a single office, in one language and with one set of fees, in one currency.
If you are interested in filing an international trademark application, it is best to contact an attorney to help you understand the process and file it.
