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Trademark Guide: International Registration using the Madrid Protocol.

By Stephanie Robinson

If your business is interested in registering its trademarks outside the United States, you should consider using the international registration system available under the Madrid Protocol. This system offers the opportunity to file one application through the USPTO, pay one set of fees to the USPTO (in U.S. Dollars), and have the mark registered in any of the other countries that have signed the Protocol without having to file separate applications in each of the countries. The system of international registration of marks is governed by two treaties, the Madrid Agreement and the Madrid Protocol. More than 70 countries have become part of the Madrid Protocol system, and the United States became a member of the Madrid Protocol in 2003. A full list of Protocol members may be found here: http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=8 For an American company, a Madrid Protocol application must be based on an application or a pre-existing registration on file with the USPTO. An international application is filed with the USPTO and forwarded to the International Bureau of the World Intellectual Property Office (?WIPO?) in Geneva, Switzerland. After verifying the basic filing requirements, WIPO will enter the mark in its international trademark register and send copies of the application to the trademark offices in the Madrid Protocol-member countries designated in the international application. Each of the designated countries will have up to 18 months in which to approve or refuse the request for registration, applying their own national standards for whether the mark may be registered. For instance, a pre-existing mark in a country may result in a denial of the request. As with any trademark application, it is therefore wise to conduct a full-scale search for existing marks and applications that may conflict with the one you are trying to register. If the registration requirements have been met, WIPO will publish your mark in its International Gazette and will issue an international registration that covers the designated countries. The registration is renewable for 10-year terms and can also be extended to other countries by filing another application. A registration through the Madrid Protocol system provides the same level of protection as a mark obtained directly through a country?s national trademark registration office. By using the system and filing one application through the USPTO, a business can save considerable time and money. Unless a conflict arises, it will not be necessary to consult with local counsel in each of the countries. Assignments, name changes, and renewals may also be handled through a single filing. Depending on the status of your mark, direct registration in other countries may still be the best method for international registrations. After conducting a thorough search of international databases and considering your particular business needs and goals, a trademark attorney will be able to recommend whether direct registration is still the preferred option. But when considering international registration, your business should at least look into the opportunity presented by the Madrid Protocol system to streamline the process for expanding protection for your mark around the world.

Full post as published by Business and Technology Law on February 19, 2008 (boomark / email).