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    Locke Lord QuickStudy: The Madrid Protocol

    Locke Lord Publications

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    The United States is a party to the Madrid Protocol, an international ‎treaty simplifying the process for registering trademarks on an ‎international basis. This treaty allows owners of U.S. trademark ‎registrations and pending applications for registration to utilize a ‎simplified and streamlined procedure for obtaining trademark ‎protection in many foreign jurisdictions.‎

    Locke Lord LLP has experience in trademark protection and licensing, in the United States and ‎internationally. We have been filing applications under the Madrid Protocol since the accession ‎of the United States in November 2003 and will be able to assist you should you seek ‎international trademark registration through the Madrid Protocol or otherwise.‎

    SUMMARY OF MADRID PROTOCOL SYSTEM
    For a modest fee, any trademark owner based in the United States may apply to register a ‎trademark covered by a U.S. trademark application or registration on an International Register ‎maintained by the World Intellectual Property Organization (WIPO). The application is filed ‎through the U.S. Patent and Trademark Office and registration on the International Register is ‎automatic upon compliance with the proper filing formalities and payment of the appropriate ‎filing fees. Registration of a mark on the International Register provides no trademark protection ‎on its own, but the owner of a trademark registered on the International Register obtains ‎trademark protection in jurisdictions that are parties to the Madrid Protocol by “designating” one ‎or more such jurisdictions. A list of the jurisdictions that are parties or soon to become parties to ‎the Madrid Protocol is set forth on Table A.‎

    When the trademark owner designates countries to be covered by the international registration, ‎WIPO forwards the details of the international registration to the trademark authorities in each ‎designated country. Each trademark office then has up to 18 months to review the application to ‎determine whether it complies with local legal requirements for registration. If any substantive ‎objection is raised, the applicant must address it in accordance with the local laws of the ‎designated country. If the designated country fails to raise an objection to the application during ‎the 18 month examination period or if all objections raised are resolved, the international ‎registration becomes effective as a trademark registration in the designated country, with the ‎same effect as if the applicant had obtained a trademark registration by applying under the laws ‎of the designated country.‎

    The most obvious benefit to utilizing the Madrid Protocol system to register ‎trademarks is that it eliminates the need to prepare and file separate trademark ‎applications in each country in which protection is sought.‎

    When filing an application for a registration on the International Register, the applicant must ‎designate at least one foreign jurisdiction and pay the applicable jurisdiction-specific fee (in ‎addition to the filing fees for the international registration itself). Additional jurisdiction covered ‎by the Madrid Protocol may be designated by the applicant at any time by payment of the ‎applicable jurisdiction-specific fee.‎

    Filings Fees and Renewal
    The filing fees under the Madrid Protocol are denominated in Swiss Francs. The base filing fee for ‎the International Registration is currently CHF 653 for a trademark (CHF 903 when the mark is in ‎color). The jurisdiction-specific filing fees vary and are set forth on Table A.‎

    Registration on the International Register remains in force for a period of 10 years. The ‎registration may be renewed for additional 10 year terms by payment of a base renewal fee ‎‎(currently CHF 653) plus a countryspecific fee for each country then designated under the ‎international registration. Like the application fee, the renewal fee varies by country the number of ‎classes of goods covered by the registration.‎

    Temporary Dependence Upon U.S. Registration/Application
    The international registration and associated rights in designated countries are dependent upon ‎the U.S. trademark registration or application upon which the international registration is based for ‎a period of five years after registration of the mark on the International Register. If the U.S. application is denied or if the U.S. registration is cancelled within this five year period, the ‎international registration and all associated benefits in designated countries will be cancelled.‎

    The owner of an international registration that has been cancelled due to termination of the ‎underlying U.S. registration may file local trademark applications with each of the designated ‎countries in which protection was previously afforded by the international registration. The ‎trademark owner must pay all applicable application fees and complete the application process ‎as provided for any other trademark application submitted under local law, but the trademark ‎owner will receive the priority date of the cancelled international registration for all local trademark ‎applications filed within three months after cancellation of the international registration.‎

    After the five year period has passed, the international registration ceases to be dependent upon ‎the U.S. registration or application and will remain valid irrespective of the abandonment, ‎cancellation or expiration of the underlying U.S. registration or application.‎

    BENEFITS OF REGISTRATION THROUGH MADRID PROTOCOL
    The most obvious benefit to utilizing the Madrid Protocol system to register trademarks is that it ‎eliminates the need to prepare and file separate trademark applications in each country in which ‎protection is sought. Because the necessary filings are handled through the U.S. Patent and ‎Trademark Office, it is no longer necessary to retain local counsel at the filing stage. Local ‎counsel need only be retained in a designated country if the trademark office of that country ‎raises objections to the registration of the trademark. This streamlined process generally results in ‎a substantial savings of fees at the application stage.‎

    Use of the Madrid Protocol system also simplifies the administrative burden of registering a ‎trademark in multiple countries. A single registration, with one renewal date, replaces multiple ‎registrations with varying renewal requirements. In addition, changes in ownership of the ‎international registration can be accomplished with a single filing.‎

    Finally, the 18-month deadline for local trademark offices to object to the extension of ‎registration to a country designated in the international registration significantly accelerates the ‎registration process in certain countries. The trademark offices in a number of countries can take ‎several years to examine trademark applications. The time required to obtain protection as a ‎registered trademark in these countries will be greatly reduced, as their trademark offices will be ‎required to issue an office action raising substantive issues with the trademark within 18 months, ‎or the trademark will be deemed registered.‎

    DRAWBACKS OF REGISTRATION THROUGH MADRID PROTOCOL
    Although the Madrid Protocol offers a number of benefits to trademark owners seeking ‎international protection of their trademarks, in certain cases there can be disadvantages to ‎obtaining trademark protection through the Madrid Protocol system rather than filing individual ‎trademark applications under the local laws of each country in which protection is desired.‎

    Scope Of Protection
    One limitation to protection of trademarks under the Madrid Protocol is the fact that the scope of ‎the trademark registration on the International Register must be identical to (or narrower than) the ‎scope of the underlying U.S. application or registration.‎

    The United States Patent and Trademark Office requires relatively specific descriptions of the ‎goods and services to be covered by a trademark registration, whereas some countries permit very ‎broad descriptions of goods and services under their local law. In addition, the trademark owner ‎must be actually using the mark on the goods or services listed in the application before a U.S. ‎trademark registration will issue. As a result, the scope of trademark protection that may be ‎obtained through an international registration based upon a U.S. trademark application or registration may be significantly narrower than the scope of trademark protection that could be ‎obtained by filing trademark applications directly in foreign countries. A registration issued as a ‎result of an application filed directly in a foreign country may be able to use a much broader ‎description of goods and services covered and may be able to protect goods and services with ‎which the applicant has not begun to use the trademark.‎

    One limitation to protection of trademarks under the Madrid Protocol is the fact that ‎the scope of the trademark registration on the International Register must be identical ‎to (or narrower than) the scope of the underlying U.S. application or registration.‎

    Dependence On U.S. Registration/Application
    As noted above, a registration on the International Register will depend upon the continued ‎validity of the underlying U.S. trademark application or registration for a period of five years. If the ‎underlying application or registration terminates, all of the fees and resources expended upon ‎the international registration will be lost. Although the trademark owner may preserve the priority ‎date of the international registration by filing in each local jurisdiction, it must essentially start ‎from scratch and incur all of the costs it sought to avoid by using the Madrid Protocol procedure ‎‎(i.e., retaining local counsel, etc.). Under these circumstances, it is often worthwhile to exercise ‎such rights of appeal as may be necessary to prevent cancellation of the underlying registration, ‎or to at least delay any such cancellation until after the five year period of dependence has ‎expired.‎

    CONCLUSION
    In determining whether to utilize the Madrid Protocol system for protecting their trademarks ‎internationally, U.S. businesses will need to weigh the cost and time savings provided by the ‎Madrid Protocol against the potential to obtain broader coverage under trademark registrations ‎filed in foreign countries. For many trademarks, the advantages of the Madrid Protocol system ‎will probably outweigh the slight reduction in the scope of protection afforded in certain foreign ‎jurisdictions.‎
    On the other hand, companies seeking to protect their marquee brands and house marks may ‎elect to continue to file local applications under the laws of each foreign country, in order to ‎obtain the maximum protection afforded to trademarks under local laws. Moreover, it is possible ‎to follow a hybrid approach and utilize the Madrid Protocol system to efficiently obtain protection ‎in a number of countries, while also pursuing local trademark applications under the laws of the ‎jurisdictions which are most important to the trademark owner.‎

    Please feel free to contact Sean Fifield or your Locke Lord attorney if you have questions about ‎the Madrid Protocol system or trademark registration generally.‎

    TABLE A | JURISDICTIONS PARTY TO THE MADRID PROTOCOL, STATUS ON AUGUST 1, 2020

    Country Jurisdiction Fee (CHF)*

    African Intellectual Property Org.**
    Albania
    Algeria
    Antigua and Barbuda
    Armenia
    Afghanistan
    Australia
    Austria
    Azerbaijan
    Bahrain
    Belarus
    Benelux***
    Bhutan
    Bonaire, Saint Eustatius and Saba
    Bosnia and Herzegovina
    Botswana
    Brazil
    Brunei
    Bulgaria
    Cambodia
    Canada
    China
    Colombia
    Croatia
    Curaçao
    Cuba
    Cyprus
    Czech Republic
    Denmark
    Egypt
    Estonia
    European Union
    Finland
    France
    Gambia
    Georgia
    Germany
    Ghana
    Greece
    Hungary
    Iceland
    India
    Indonesia
    Iran (Islamic Republic of)
    Ireland
    Israel
    Italy
    Japan
    Kazakhstan
    Kenya
    Korea (DPR)
    Korea (Republic of)
    Kyrgyzstan
    Laos
    Latvia
    Lesotho
    Liberia
    Liechtenstein
    Lithuania
    Macedonia (Republic of) 
    Madagascar
    Malawi
    Malaysia
    Mexico
    Moldova
    Monaco
    Mongolia 
    Montenegro
    Morocco 
    Mozambique
    Namibia
    New Zealand
    Norway
    Oman
    Philippines
    Poland
    Portugal
    Romania
    Russian Federation 
    Rwanda
    Samoa
    Saint Martin
    San Marino
    Sao Tome and Principe 
    Serbia
    Sierra Leone
    Singapore
    Slovakia
    Slovenia
    Spain
    Sudan
    Swaziland
    Sweden
    Switzerland
    Syrian Arab Republic 
    Tajikistan
    Thailand
    Tunisia
    Turkey
    Turkmenistan
    Ukraine
    United Kingdom 
    Uzbekistan
    Vietnam
    Zambia
    Zimbabwe

    704 + 144/class over 3
    100 + 100/class over 3
    100 + 100/class over 3
    247/flat fee
    221 + 22/additional class
    100 + 100/class over 3
    222/class
    100 + 100/class over 3
    100 + 100/class over 3
    1710/class
    600 + 50/class over 3
    266 + 89/additional class
    100 + 100/class over 3
    195 + 20/class over 3
    100 + 100/class over 3
    100 + 100/class over 3
    210/class
    196 + 107/additional class
    327 + 21/class over 3
    139/class
    251 + 76/additional class
    249 + 125/additional class
    273 + 136/additional class
    100 + 100/class over 3
    336 + 35/class over 3
    356 + 91/additional class
    100 + 100/class over 3
    100 + 100/class over 3
    302 + 91/class over 3
    100 + 100/class over 3
    151 + 47/additional class
    897 + 164/class
    243 + 108/additional class
    100 + 100/class over 3
    97/class
    314 + 115/additional class
    100 + 100/class over 3
    379/class
    127 + 21/additional class
    100 + 100/class over 3
    266 + 57/additional class
    124/class
    144/class
    100 + 100/class over 3
    257 + 73/additional class
    469 + 352/additional class
    95 + 32/additional class
    377 + 351/additional class
    100 + 100/class over 3
    312 + 223/additional class
    100 + 100/class over 3
    224/class
    340 + 160/additional class
    123 + 88/additional class
    100 + 100/class over 3
    100 + 100/class over 3
    100 + 100/class over 3
    100 + 100/class over 3
    100 + 100/class over 3
    100 + 100/class over 3 
    100 + 100/class over 4 
    100 + 100/class over 3 
    259/class
    132/class
    252 + 52/additional class 
    100 + 100/class over 3 
    100 + 100/class over 3 
    100 + 100/class over 3 
    250 + 50/additional class 
    100 + 100/class over 3 
    100 + 100/class over 3 
    63/class
    216 + 61/class over 3 
    484/class
    116/class
    100 + 100/class over 3 
    100 + 100/class over 3 
    100 + 100/class over 3 
    100 + 100/class over 3 
    100 + 100/class over 3 
    196/class
    298 + 31/class over 3 
    233 + 58/class over 3 
    100 + 100/class over 3 
    100 + 100/class over 3 
    100 + 100/class over 3 
    242/class
    100 + 100/class over 3 
    100 + 100/class over 3 
    100 + 100/class over 3 
    100 + 100/class over 3 
    100 + 100/class over 3 
    226 + 89/additional class 
    450 + 50/class over 3 
    335/class
    373 + 29/additional class 
    418/class
    207 + 41/additional class 
    73 + 14/additional class 
    151 + 76/additional class 
    429 + 86/class over 3 
    227 + 63/additional class 
    028 +103/additional class 
    161/class
    98 + 79/additional class 
    97 + 58/additional class 


    * Fee (in Swiss Francs) charged by designated jurisdiction, which is based upon number of international classes covered by registration. In most jurisdictions,thebasefeecoversthefirst3classes,withanadditionalfee for the fourth and each additional class. In other jurisdictions, the base fee covers the first class, with an additional fee for the second and each additionalclass.Additionalfeesmaybeduewherethemarkisacollective mark rather than a trademark.

    ** The African Intellectual Property Organization (OAPI) covers Benin, Burkina Faso, Cameroon, the Central African Replic, Chad, Comoros, Congo, Ivory Coast, Equatorial Guinea, Gbon Guinea, Ginea-Bissau, Mali, Mauritania, Niger, Senegal and Togo. However, local legislation has not been implemented, so registration in OAPI through the Madrid Protocol will not effective until such legislation is adopted.

    *** The Benelux Customs Union, consisting of Belgium, Luxembourg and Netherlands,is considered a single jurisdiction for trademark purposes.

     

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