By: Vivek Vaidya
While federal trademark registration with the United States Patent and Trademark Office provides protection for business activities in the United States, companies that offer products and services internationally should look to register in each of the countries they perform commerce. Filing applications in multiple countries would be extremely tedious, but luckily there exists an easier way: The Madrid Protocol for International Registration of Trademarks. The Madrid Protocol provides an efficient way for federal trademark owners to protect their trademarks in multiple countries though a single application that is processed by their home country’s trademark office.
HOW TO APPLY
An individual or entity seeking international trademark registration through the Madrid Protocol is required to register their trademark with a country’s trademark office that has agreed to be part of the Protocol. Generally, one may register in a country’s trademark office if its entity was formed there, or if an individual is a citizen/domiciled in the country. The next step is to submit an international application through this same trademark office, which will certify and forward the application to the World Intellectual Property Organization (“WIPO”). An international registration application can be filed in English, French or Spanish, and includes filings fees amounting to one a basic fee, a fee for each class of goods/services if filing in excess of three classes, and an additional fee for each country in which registration is sought.
Once the International Bureau of WIPO receives your international application, WIPO will conduct a formal examination of your international application. If WIPO approves the application, then the mark will be recorded in the International register and it will be published in the WIPO Gazette of International Marks.
Next, the individual trademark offices of the applied for countries will conduct a substantive examination to determine the scope of protection according to their domestic legislation. WIPO has no control over the national trademark offices’ decisions regarding the scope of the protection, therefore the national offices decide the scope of your trademark protection in their country. Once the national trademark office makes their decision, WIPO will record the decisions of these offices and record them in the International Register. An international trademark registration is effective for 10 years and it can be renewed for 10-year periods. The effects of an international registration start from the date of the international registration in each country that protection was sought.
I WANT TO REGISTER MY TRADEMARKS INTERNATIONALLY. WHAT NOW?
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Disclaimer: This article discusses general legal issues, but it does not constitute legal advice. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.