The ever-growing amount of business that can be and is being done online is one factor driving the ever-growing need for global protection of trademark rights. The Madrid Protocol is an international treaty which provides one method of registering a trademark in several international jurisdictions through one simplified process. The Protocol is an alternative to the traditional method for a global expansion of trademark rights: filing individual trademark applications in each desired country using local counsel.
The Madrid Protocol allows the holder of a trademark registration in a Protocol country to extend the “home” registration to other Protocol countries. Trademark holders do this by essentially checking off the desired countries and paying a fee. There are currently 84 Protocol countries, and new countries are always joining (New Zealand, India, and Tunisia have all passed legislation in their respective countries to join the Protocol). Filing Protocol applications in foreign jurisdictions does not require foreign counsel.
Procedure and Cost Summary
Using the Protocol to acquire international registrations is effectually extending the trademark rights in the “country of origin”. While any Protocol country can be the country of origin for a Protocol “extension of protection,” the United States will be used as the example.
A trademark applicant to the United States Patent and Trademark Office (USPTO) may choose to extend that application or registration anytime after an application has been made (before and/or after a registration certificate has been issued). A fee is paid to the USPTO, which certifies the application, and send it to the International Bureau, an office maintained by the World Intellectual Property Office (WIPO) in Switzerland. After selecting the countries in which the applicant seeks trademark protection, a fee is paid to the International Bureau. Here are links to the current fee schedule and fee calculator.
The International Bureau then forwards the application to the selected countries’ trademark offices, which then assess the application on more-or-less the same basis they would a domestic application. If the application meets the foreign trademark offices’ requirements, an “extension of protection” is granted in that country. It is important to note that this is not the equivalent of a registration in that country. This will be explained in the next post.
Initial filing costs are based on the number of international classes (listed here with brief descriptions), as well as costs charged by the trademark office of the country of origin. This fee is $100 per class for the USPTO. Keep in mind these are only initial costs, covering only the cost of filing the application.