Madrid Protocol System - International Trademarks

While there is no such thing as an international trademark, the Madrid Protocol system provides the next best solution if you want to register your trademark in a number of countries in one go.

Provided the country in which you or your company is located has signed up to the Madrid Protocol you may use a Madrid Protocol application to designate several countries of your choice, provided they are party to the Madrid system.

The current list of countries within the Madrid System has some notable gaps, such as South Africa, Hong Kong and many South American and Middle Eastern countries.  However, more and more countries are signing up every year. India and Mexico signed up in 2013, China in 2012. Cambodia in 2015 and Canada, has now also become party to the Madrid Protocol.

 Certain OAPI (African Intellectual Property Organization) countries and Zimbabwe have also joined. The OAPI countries include: Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoro Islands, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.

How the Madrid Protocol works in practice  

The first step to securing wider protection globally is to register a trademark in your home country as a starting point.

For UK companies, the base application will be a UK trademark.

Then once that UK application is filed, you may extend your registration by using a single Madrid system application. In that application you designate your desired countries (which must also be party to the Madrid system).

The overall costs will depend on the number of classes in which you file your application and the official government fees of the countries in which you are applying to register. Note that the application must use the same classes as the base application, although it is possible to apply in fewer classes than your base application.

The official fees vary a lot from one country to another. To get an indication of the official fees, use our official fee calculator. The legal fees will depend on the number of countries and classes involved.

You save on legal fees because there is no need to appoint attorneys in each of the countries in which you’re applying to register your mark when you file your Madrid System application.

However, if the trademark office of one of a country you’ve designated in your application raises an objection, it is necessary to appoint a local attorney who has rights of audience, to handle the case for you. This is why it’s well worth using a lawyer to file your initial Madrid application. For one thing it avoids costly mistakes which happen quite often when individuals file their own application. For another, it means that if there are objections to your application from an examiner or if a third party opposes your application, you will be likely to get a good local lawyer to handle the matter given that your lawyer is likely to have contacts to good lawyers.

Conclusion

With more and more companies doing business online, businesses nowadays must think about international trademark protection from the word go. It’s how you protect your revenues in other countries.

Before the Internet became the main route to market for so many companies, global trademark issues would only have arisen for them once companies were substantial enough to move into other countries.

Nowadays, being online means you do business worldwide, so that it is increasingly important to check the trademark registers in other jurisdictions before making a final selection of a name. This is often overlooked by businesses, even substantial ones, with serious consequences. For example, as mentioned in our previous post SkyDrive Set for a Skydive? Microsoft had to rebrand to One Drive,

Once a company has done its due diligence in other markets and settled on a name it needs a clear strategy for registering in other markets. And the Madrid System provides a cost-effective way to obtain multiple registrations worldwide. The cost of applying in 3 classes in 10 countries could come to less than it would to register in 2-3 countries that are not party to the Madrid system.

If you would like more information on the Madrid Protocol system, or would like to talk to us about registering your trademark in one or more other countries