What Is the Madrid Protocol?
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The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, commonly known as the Madrid Protocol, is an international agreement that permits trademark owners that are residents of or active in a member country to file a single “international application” designating any number of Madrid Protocol member jurisdictions. Accession to the Madrid Agreement is not required, despite the name of the treaty. The International Bureau of the World Intellectual Property Organization performs some basic administrative checks and, if any no problems or if they are resolved, issues an “international registration.” By itself, the international registration has no enforceable value; the “registration” details are then provided to all designated trademark offices for further examination.
The main benefit of filing via the Madrid Protocol is cost: it is generally much more cost-efficient to file a central international application than to use local counsel in each jurisdiction. After filing, if there are no substantive issues raised by local examiners, there may be little to no additional cost, although some jurisdictions also charge a registration fee. Renewals are also administratively simple: a single renewal renews the registration rights in all countries where the mark is protected by way of the international registration.
The main downside is “dependency.” The Madrid Protocol registration only remains valid if the “home country” application it is based on remains active (pending or registered) five years from the international registration date, and for the goods and services that remain active in that pending application or registration. That can be a disadvantage in two ways, especially for US applicants. Jurisdictions that do not require use (see our guide about "What Is an Acceptable Specimen of Use?" for more) have the effect of permitting broader descriptions of goods and services in directly-filed applications than US applicants can access via the Madrid Protocol. The United States Patent & Trademark Office’s vigorous examination of US applications results in more refused applications than most trademark applications internationally. Where the proposed mark faces potential registration difficulties in the US, or the US description of goods and services may be inadequately broad, the Madrid Protocol may not be a great fit. The applicant can convert the Madrid Protocol filing into directly-filed trademark applications in the designated countries if the “home” application or registration lapses, but the end result is higher costs than direct filings.
You can view a list of current members on the World Intellectual Property Organization’s website here. The Madrid Protocol has been in effect in the United States of America since 2003.
- What Jurisdictions Are Available for Searching?
- What Is a Trademark?
- What Factors Go Into Picking a "Good" Trademark?
- How Much Are Trademarks Worth?
- What Is the Difference Between a Trademark, a Copyright, and a Patent?
- How Do I Get Trademark Protection?
- Why Should I Do a Clearance Search for a Trademark?
- What Is the Benefit of Registering a Trademark With the USPTO?
- What Is the Cost To File a Trademark Application?
- What Is an International Class In a Trademark Application?
- What Are Goods and Services In a Trademark Application?
- What Does an Examining Attorney Look For When Reviewing a Trademark Application?
- When Is There a Likelihood of Confusion Between Two Marks?
- What Is an Acceptable Specimen of Use?
- What Is the Difference Between the Principal Register and the Supplemental Register?
- How Long Does It Take To Register a Trademark?
- How Long Does a Trademark Last?
- What Is the Madrid Protocol?
- What Is the Nice Agreement?
- What Is the Paris Convention?
- How Do I Properly Use My Trademark?
- How Do I Protect My Trademark?
- What Trademark Symbol Should I Use?
- What Is Trademark Infringement?
- How Do Trademark Rights Relate to Domain Names (and What Is a UDRP)?
- How Do Trademark Rights Relate to Business Name Rights?
- How Do I Form a Business Entity?