What is the Madrid Protocol?
The Madrid Protocol is an international treaty that provides a streamlined and cost-effective way to apply for a trademark registration in up to 124 countries, filing only one application, in one language (English, Spanish, or French), with one set of fees. This allows the applicant to bypass hiring a local representative in each country to file the initial application.
Additionally, the Madrid Protocol simplifies trademark management, requiring only a single procedure and fee when making any subsequent modifications or renewals. For instance, a request to update an address is submitted to the International Bureau of the World Intellectual Property Organization (WIPO), instead of each member country.
Further, the Madrid Protocol provides a convenient means to apply for subsequent designations in additional countries/regions, allowing the applicant to expand his/her/its international trademark protection as the business grows.
Who Can Use the Madrid Protocol?
Any individual or entity that is (a) a national of, (b) domiciled in, or (c) has a “real and effective industrial or commercial establishment” in one of the Contracting Parties of the Madrid Protocol.
An applicant that meets the above criteria can apply for an international trademark registration based on a pending or registered mark filed with, or issued by, one of the Contracting Parties. This is referred to as a “basic application” or “basic registration.”
This article focuses on international trademark applications using the Madrid Protocol that are filed with the United States Patent and Trademark Office (USPTO) as the Office of Origin.
Conduct a Trademark Search Before You File.
A trademark clearance search should be conducted prior to filing a basic application and/or international application. There are free databases that will assist in your search, including the Trademark Electronic Search System (TESS), the Madrid Monitor, and the WIPO Global Brand Database. Additionally, a common law search should be conducted to evaluate any similar unregistered marks. In the U.S., common law rights can be asserted by the first user of a mark even without a registration.
While these databases are accessible to the public, it is highly recommended that you have an attorney perform a structured search of similar marks in the same or coordinated classes that may cause a “likelihood of confusion” refusal. You may not come across any direct conflicts for your mark, but multiple factors are considered when determining whether a likelihood of confusion would exist between marks. These factors include the similarity of the appearance, sound, connotation and commercial impression of the marks, and the relative closeness of the goods/services being offered.
This initial investment will help you determine whether you should modify or change your mark (if needed) to minimize the chances of a “likelihood of confusion” refusal. It will also help you avoid the costs of responding to an Office Action, and/or the costs of defending an infringement claim.
When Should You File?
First, it is important to understand that most countries grant trademark rights based on the filing date (“first-to-file”), not commercial use (“first-to-use”). Trademark rights in the United States are granted on a first-to-use basis (in interstate commerce).
This is not always as straightforward as it may seem, so it is best to file your basic application as soon as possible to establish your priority date. If you have not started using the mark, but have a good faith intention to do so, you can file an “intent-to-use” application with the USPTO.
Importantly, the applicant must file an international application using the Madrid Protocol within 6 months of the filing date of the basic application to obtain priority to the U.S. filing date. The international application should be identical to the basic application, with the exception that the goods or services in the international application can be limited. Applicants can still file an international application using the Madrid Protocol after the 6-month window, but priority rights to the U.S. filing date cannot be claimed.
How Much Does It Cost?
At the time of filing, one set of fees will be submitted to the USPTO, and the international fees will be forwarded to the WIPO. There are either three or four categories of fees depending on the number of classes of goods/services listed in the application: (1) USPTO certification fee, (2) WIPO basic fee, (3) contracting party fees, and (4) a supplemental fee for more than 3 classes of goods/services.
Please note that the USPTO certification fees listed below are in U.S. dollars, but all other fees are in Swiss Francs (CHF). These fees are subject to change. Check the USPTO and WIPO sites for current rates prior to filing.
USPTO Certification Fee
Once the application is filed, the USPTO will evaluate whether the international application meets the minimum criteria. The international application must match the basic application or registration. In particular, the marks and owners must be identical, and the goods/services cannot be broader than those listed in the basic application or registration. If the application meets the minimum criteria, the USPTO will certify the application and forward it to the International Bureau within 2 months.
The USPTO certification fees are:
(a) US$100.00 per class of goods/services for a single basic application or registration; OR
(b) US$150 per class of goods/services based on more than one basic application or registration.
WIPO Basic Fee
(a) CHF$653 for a mark with no color claim; OR
(b) CHF$903 for a mark in color.
Contracting Party Fees
These fees vary. You can visit WIPO’s fee calculator to calculate the fees for the desired Contracting Parties within the Madrid Protocol system. Again, please note that these fees are calculated in Swiss Francs (CHF).
CHF$100 per class of goods/services in excess of 3.
Monitor Your Application.
As mentioned above, the first step is for the USPTO to certify the international application. Then, the WIPO reviews the application for irregularities, such as improper classifications. If approved, the mark is recorded in WIPO’s International Register for international registration and published in the WIPO Gazette of International Marks.
The term “international registration” is misleading at this stage. The applicant does not have a registered mark in the designated Contracting Parties at this point. Instead, the term “international registration” is one phase of the Madrid Protocol process, granting the applicant the right to apply for registration in the designated Contracting Parties.
The WIPO notifies the designated member countries of the international registration and each country will conduct its own substantive review to determine whether registration will be granted. Each country must either grant or reject the application within 18 months (unless extended due to an opposition).
You can track your application throughout this process using the Madrid Monitor.
Maintain Your Registration.
Congratulations, your mark has proceeded to registration in one or more member countries! Your responsibilities, however, do not end here.
For the first five years, the international registration is dependent on the basic application or registration. Therefore, if your basic application or registration is cancelled, your international registration will likewise be cancelled. As such, it is important to maintain both your basic application/registration and international registration.
After the five-year period, your international registration is independent and must be renewed every 10 years. Request for renewal can be submitted directly to the International Bureau, instead of each individual member country.