MADRID PROTOCOL – Providing International
H. Miller and Bobby
United States began effective participation
in the Madrid Protocol (“MP”) on November
2, 2003, which marks what could be considered
the most significant development in U.S. trademark
law in more than a decade. The primary
function of the MP is to provide a centralized
filing system for simultaneous application
of a trademark registration and maintenance
in member countries. Most industrialized
countries are either members or committed
to membership including the European Community
states, Japan, and Australia.
qualified owner of a US trademark application
or of a US trademark registration may file
an application for MP international registration.
To qualify, the applicant must simply:
Be a national of the United States;
Be domiciled in the United States;
Have an industrial or commercial establishment
in the United States.
are the Benefits to You?
trademark owners benefit from cost savings
when a mark is sought to be protected through
the MP as compared to the conventional country-by-country
process which is expensive and procedurally
confusing. The MP process is simple
administratively, relatively fast, provides
for a central office, and has lower registration
costs. A U.S. trademark owner can now
file a single international application, in
one language, pay one fee using a single currency,
to seek registrations having one renewal date
in all MP countries.
MP is administered by the International Bureau
of the World Intellectual Property Organization
(“WIPO”) in Geneva, however, application is
not made directly to WIPO. The U.S.
applicant submits the international application
through the United States Patent and Trademark
office (“USPTO”) which forwards it to WIPO
after certifying certain information.
WIPO issues an international registration
certificate with registration number and filing
date, and notifies the trademark offices of
all designated countries. Each designated
country examines the application as a national
trademark application under its own laws and
practices. That is, a national office
can refuse protection of a mark, under certain
time constraints, on the same grounds (such
as lack of distinctiveness, etc.) that apply
if an application had been filed directly
as a national application. The MP provides
strict time limits (a maximum of 18 months)
for any application refusals. If the
national office does not notify WIPO of a
refusal within the specified time period,
the mark automatically becomes protected in
There Any Drawbacks?
U.S. trademark owner's use of the MP could
result in a narrower scope of protection for
its goods and services compared to direct
national filings. Under the MP, the
registration's protection can only be as broad
as the coverage allowed by the host country.
Our USPTO requires descriptions of
goods and services which are narrower than
what other countries require. Many
other countries allow very broad descriptions.
Consequently, broader protection may
be obtained via individual national filings.
the MP does not permit any changes to the
form of a registered mark through amendments,
even though many member countries allow minor
changes if the registration had been obtained
via a direct national filing.
A U.S. trademark owner might also find his
assignability limited. An MP registration
can only be assigned to an assignee of an
MP member country. For example, since
Mexico is not a member, an assignment to a
company in Mexico may not be possible. Few
Latin American countries are members.
owners who file a significant number of foreign
applications should have a thorough understanding
of the pros and cons of the available registration
systems including the MP and other centralized
systems, such as the regional European Community
Trademark system and direct national filings.
A counsel experienced with international
trademark registration can assist in determining
which approaches best meet your company's
particular objectives. Should your
company need such assistance, please contact
the authors at firstname.lastname@example.org
any Jackson Walker attorney at 1.866.922.5559.
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