International Trademark Filings Using the Madrid Protocol
What is the Madrid Protocol?
The Madrid Protocol is a system used to register marks internationally. The International Bureau of World Intellectual Property Organization in Geneva, Switzerland (WIPO) handles the administration of these procedures. The Madrid Protocol allows us to apply for trademark registration and protection in many countries with the filing of a single international application. An international trademark application using the Madrid Protocol has the same effect as filing an application with any one of the individual countries listed on the international application.
Because you will not be able to file an international application before filing for a United States trademark you may wish to take advantage of our Flat-Rate USPTO trademark packages. (Click Here to Learn More)
Who May File an International Application Through the United States Patent and Trademark Office?
Any trademark owner with an application filed in or a registration issued by the USPTO and who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the United States can submit an international application through the United States Patent and Trademark Office (USPTO). Every international application must first begin with, and be based on, a local trademark application (the “Basic Application”). A later international application must be based on an earlier application and/or registration of the same mark and for the same goods or services. For example, if the holder of the mark is an American citizen and registers the mark with the USPTO, that individual may apply for international registration in various other countries but is limited to application for the same mark and for the same goods and services sold in connection with that mark.
The following is a list of the Madrid Protocol member countries that may be selected for inclusion in your international trademark application:
Antigua & Barbuda
Austria (EU member)
Benelux (Belgium, The Netherlands and Luxembourg) (EU member)
China (excluding Hong Kong and Macau).
Cyprus (EU member)
Czech Republic (EU member)
Denmark (EU member)
Estonia (EU member)
Finland (EU member)
France (EU member)
Germany (EU member)
Greece (EU member)
Hungary (EU member)
Ireland (EU member)
Italy (EU member)
Latvia (EU member)
Lithuania (EU member)
Oman (from 16th October 2007)
Poland (EU member)
Portugal (EU member)
Romania (EU member)
Slovakia (EU member)
Slovenia (EU member)
Spain (EU member)
Sweden (EU member)
United States of America
Now Let’s Get It Done!
After it is determined that you are eligible to apply for international registration of your mark, the next step is to apply by filing first with the USPTO.
In the United States, the USPTO will check to ensure that you have a proper “home-based” application or registration. Once this checks out, the USPTO then certifies your application and sends it to the International Bureau at WIPO in Geneva, Switzerland, together with your international application. The international certification fee is $100.
Next, WIPO assigns a number and date to your application and publishes it in the WIPO Gazette of International Marks. The details of your application are sent to each member country that you selected on your international application. Each selected country then reviews your application to ensure it is in compliance with its domestic trademark laws.
It is important that your paperwork is in proper order and complies with each selected country’s trademark laws. This will help limit objections to your proposed trademarks.
What Is The Cost For Filing An International Application?
If in the United States, fees are paid to the UPSTO and to the International Bureau. Fees for United States application, on which the international filing is based, range between $275 and $325 per class of goods or services. In sum, the applicant would pay for the basic USPTO trademark (between $275 and $325 per class) plus $100 per class to certify and submit the application to the International Bureau, and, finally, the application fees for each of the selected countries (other than the United States). Every member country has its own application fee. Please contact us for a quote of international filing fees for the countries in which you wish to obtain trademark protection.
The fees also are guided by whether or not your mark is in black and white and/or color, and the number of classes of goods and/or services designated. More specifically, the following are some of the factors and considerations that determine the fees for international applications: whether the mark is in black-and-white or in color, which member countries are selected on the international application, and the number of classes of goods or services that are selected. All this must be taken into account when seeking international registration of your mark. In sum, the total fees for international applications depend on a number of factors and can become complicated without professional guidance. Please contact us for a quote of international filing fees for the countries in which you wish to obtain trademark protection.
What If You Want To Register Your Mark In a Country That Is Not a Madrid Protocol Member Country?
Rather than going through the WIPO and using the Madrid Protocol, we would file an application directly with that particular country. For example, if you wanted to register your mark in Canada (a non-member of the Madrid Protocol), we would file an application directly with the Canadian Intellectual Property Office (CIPO).
No matter where you wish to register your mark, know that every country has its own trademark examination process. In Canada, as is the case in the United States, once your application is filed, a search is conducted by examining attorneys at the Intellectual Property Office to determine whether your proposed trademark conflicts with other already registered trademarks. If the examining attorney does find a conflict, you will be notified and typically you will be given a chance to respond. Click here for more information on Office Actions. You also will be advised of which requirements were not met in your application, pursuant to that country’s trademark laws. To avoid needless spending, you should conduct a trademark availability search before filing your trademark application.
If you wish to register in a country that is part of the European Union (Austria, Benelux, Czech Republic, Denmark, Finland, France, Germany, Hungary, Ireland, Italy, Liechtenstein, Lithuania, Monaco, Norway, Poland, Sweden, Spain, Switzerland, and the United Kingdom), the process is quite similar to the Madrid system because in that one application may be filed for all countries that are members of the European Union Community Trademark Act.
In sum, before seeking international status for your mark, register your trademark with the USPTO. From there, your international application is simply an effort to expand your registration in order to provide international protection, and as noted above, this can be done through the Madrid Protocol, the European Union Community Trademark Act, or registering in the individual countries directly.
International Trademark filings can be complicated matters and if not done correctly unnecessarily costly as well. Feel free to contact us; we are happy to discuss the options with you.