International Trademark Registration - The Madrid System. Episode 86

Overview of International Trademark Registration

In the last episode, I talked about how to get your design registered throughout the world using the Hague System. This system simplifies the process compared to filing separate design applications in different countries.

I also discussed how the Hague System is similar to using a PCT application for patent protection worldwide. While there’s still no single worldwide patent or worldwide design registration, certain systems help cut out many steps and significantly reduce costs compared to filing separate applications in each country.

This episode is about obtaining worldwide trademark registration. Just like patents and designs, there is no such thing as a single international trademark that automatically grants protection in every country. However, using something called the Madrid System—which consists of two treaties, the Madrid Agreement and the Madrid Protocol—you can streamline the process of registering your trademark in multiple countries.

Currently, 121 countries participate in the Madrid Protocol. While this doesn’t cover every country, most of the major markets where you might want protection are included.

Why Get Worldwide Trademark Registration?

If you operate a business and plan to expand internationally, or if you sell products worldwide, you want to prevent counterfeiters from using your trademark. If your trademark is not registered in those other countries, it can be difficult—or even impossible—to stop them from selling counterfeit goods with your mark. Without trademark registration in those countries, you lack the legal standing to enforce your rights.

How the Madrid System Works

To use the Madrid System, you must first file a trademark application in your home country—in this case, the United States. Unlike a PCT patent application, where you can file an international application first, the Madrid System requires you to begin with a national application.

Advantages of the Madrid Protocol

One of the biggest benefits of the Madrid Protocol is that it centralizes registration. Instead of making separate payments in 100 different countries, you make just one payment to a single entity.

The system also simplifies renewal. Instead of hiring 100 different attorneys to renew your trademark in different jurisdictions, you can process renewals centrally, saving significant time and costs.

Another advantage is that it streamlines administrative tasks such as changing the trademark owner’s name or address. If you had to update these details in 100 countries, it would be incredibly expensive. With the Madrid Protocol, you can make these changes in one place.

Disadvantages of the Madrid Protocol

Despite the advantages, there are some drawbacks.

First, if your trademark is refused in a country, you will need to hire local counsel in that country to handle the refusal. In some cases, it may have been cheaper to work with a local attorney from the beginning to ensure compliance with that country’s specific rules.

Another issue is that, during the first five years after registration, your international registration remains dependent on your original U.S. application. If your U.S. application is canceled for any reason, your international registration will also be canceled.

Additionally, you cannot amend your trademark under the Madrid Protocol. In some countries, if there are minor issues—such as needing to add or remove a period or the word “The”—you can amend your mark. However, under the Madrid System, no amendments are allowed.

You also cannot expand the goods and services covered by your registration. In some countries, if you later want to include additional products or services under your trademark, you can do so. But if you file under the Madrid Protocol, you are restricted to the original goods and services listed in your application.

Eligibility for Filing an International Application

To file an international trademark application through the United States Patent and Trademark Office (USPTO), you must meet certain criteria. You must be:

• A national of the United States

• Domiciled in the United States

• A business entity with a real and effective industrial or commercial establishment in the United States

You file your application through the USPTO’s electronic system, called TEAS. Paper forms are available, but I don’t recommend using them.

Your international application must be based on an existing U.S. trademark application or registration. It does not need to be registered yet—an application is sufficient.

The goods and services covered in your international application must be the same as or narrower than those listed in your U.S. application. You cannot expand the scope of your goods and services beyond what was initially filed in the United States.

When filing, you will select the countries or regions where you want protection. Each country is a separate designation, but you can check a single box for the European Union, which covers multiple countries.

How Much Does It Cost (in the year 2019)?

To estimate the cost, you can use the World Intellectual Property Organization (WIPO) fee calculator.

On the WIPO website, enter:

• The date of filing

• The country where your home application was filed (e.g., the United States)

• The number of classes for your trademark (for simplicity, let’s assume one class)

After selecting the countries where you want protection—let’s say Japan, China, and the European Union—you will see the breakdown of fees.

For example, if you file an international application designating these regions:

• The basic filing fee is 653 Swiss francs

• China’s fee is 249 Swiss francs

• The European Union’s fee is 897 Swiss francs

• Japan’s fee is 108 Swiss francs

The total is 1,907 Swiss francs. Since the exchange rate between Swiss francs and U.S. dollars is close to 1:1, that’s approximately $1,940.

The reason fees are listed in Swiss francs is that WIPO is based in Switzerland.

What Happens After Filing?

Once you submit your application, a U.S. examiner will certify that it meets the requirements and then forward it to the International Bureau. The International Bureau will review the application for irregularities.

If there are any issues, they will notify you, and you’ll need to fix them—usually through the USPTO.

After all formalities are completed, each country you selected will be notified that an international registration has been filed. These countries then have 18 months to refuse your application; otherwise, it is automatically protected.

Handling a Refusal

If your trademark is refused in a country—perhaps because a similar mark already exists—that country will send a refusal notice to the International Bureau, which will then notify you. If this happens, you will likely need to hire an attorney in that country to respond.

Expanding to Additional Countries

If you later decide you want protection in additional countries, you can file a subsequent designation to expand your international registration.

Duration and Renewal

Your international registration lasts for 10 years and can be renewed if you are still using the mark.

Should You Use the Madrid System or File Directly?

If you are only interested in protecting your trademark in a couple of countries, it may be cheaper and less complicated to file directly in those countries using local attorneys. However, if you need broad protection, the Madrid System can save time and money.

Final Thoughts

As always, I’ve simplified this topic and omitted many details. If you are considering international trademark registration, consult with an attorney to ensure the process is handled correctly. There may be additional steps or considerations depending on your specific situation.

I’m Adam Diament, and until next time, keep on inventing.