The Madrid Protocol

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, otherwise known as the Madrid Protocol, is an international treaty that allows business owners to apply for trademark registration in any of the countries that have joined the Madrid Protocol.

This is done by filling in one international application form, in the applicant's home language, and paying one set of fees in Swiss francs. The applicant's trademark can then be protected in up to 122 countries.

The Madrid Protocol application process is efficient, cost-effective, and does not require a local agent to do the filing. Trademark owners can designate as many or as few countries as they want (bearing in mind that a fee will be charged for each country) on a single application that will be sent to the World Intellectual Property Organization (WIPO).

WIPO coordinates the requests for protection, renewal, and other relevant documents and sends them to the relevant participating countries. If the application is approved, WIPO may issue an international registration, but it is the right of each country to determine whether protection for a trademark will be given according to their legislation.

If the country gives approval, the trademark will be protected in that country as if the application were filed directly in that country. Any changes in ownership or name or address of the holder that are made in the home country will be recorded with the WIPO's International Bureau, which administers the Madrid Protocol, and relayed to the relevant Contracting Parties.

Pricing:

The base fee for the international trademark registration is 653 Swiss francs or 903 Swiss francs for a mark in color. There will be additional costs depending on which country you want to protect your trademark in and on how many classes of goods and services will be covered by your registration.

For example, registering a trademark with no color elements in Greece and the African Intellectual Property Organization for three classes of goods would be priced as follows: 653 (base fee) + 115 (one class in Greece) + 42 (two additional classes in Greece) + 704 (three classes in OAPI) = 1,514 Swiss francs.

Expanding the scope of your trademark coverage to include more countries, after you have obtained the international registration, will have additional fees. You can see a list of the individual fees in Swiss francs on the WIPO website.

WIPO also provides a Fee Calculator that applicants can use before applying for registration to estimate the fees payable.

Who can apply:

An individual or legal entity with a personal or business connection to any one of the countries that are Contracting Parties in the Madrid System can apply to the Madrid Protocol. This means that you must either reside in, have an industrial or commercial establishment in, or be a citizen of one of the 122 countries that are Contracting Parties with the Madrid Protocol.

You can only register your trademark through the Madrid Protocol if your trademark has already been registered with the trademark office of your home country, or the country you primarily do business in.

How to Apply:

1. File a Base Application With Your Home Country.

In order to start the process, you must first file an application with your home country's trademark office. In the U.S., this would be the United States Patent and Trademark Office (USPTO). Once you have filed this application, you don't need to wait for approval and can begin the international application immediately.

2. Search the Global Brand Database.

Before filing your international application, search WIPO's Global Brand Database to find out if similar or identical trademarks already exist or are pending in your target countries. If your mark infringes on another person or legal entity's rights, you may not be able to register it.

WIPO's Global Brand Database allows you to search for registered trademarks under the Madrid System, registered Appellations of Origin under the Lisbon System, and protected emblems under the Paris Convention 6ter. You can perform one search that will cover multiple sources, use different search features to find similar or identical word marks, and use the image search function to find similar or identical image marks.

It is important to note that the Global Brand Database does not cover marks that have been filed directly (outside the Madrid Protocol) with most countries. It may, then, be best to also search the national/regional IP Offices' registers. You can find links to these IP Offices through WIPO's website on the Madrid Member Profiles page.

If you find a similar or identical mark, you may still be able to file an application for your trademark. You will need to determine if the mark you found is for the same or related goods and/or services as your own mark and if it is a live application or registration.

If the registered mark is for unrelated goods, or it is a lapsed application or expired registration, you can proceed with your application. If the registered mark is for similar goods or is a live application or registration and you choose to file your application anyway, you may receive a provisional refusal. In this case, it may still be possible to overcome the refusal but you will need to contact a local representative in the country that you have the necessary connections to.

3. File Your International Application.

You must be eligible to apply and have already filed a base application.

International application Form MM2 (available in English, French, and Spanish) must be used and filed with the same IP Office as where you filed your base application. Form MM1 and MM3 are no longer used. The IP Office will check that it corresponds with your basic mark, certify your international application, and then forward it to WIPO. Do not send it directly to WIPO.

Applicants filing through the IP Offices of Australia and Benelux may use e-filing. Applicants that are applying for trademark protection in the United States of America must also file Form MM18, which is a declaration of intention to use the mark.

In section 10 of Form MM2 you will be asked to classify your goods and services. To do this, you will need to use the Nice Classification.

4. Pay Your Application Fees.

All application fees should be paid to WIPO, however, there are some Contracting Parties that collect the fees and forward it to WIPO on the applicant's behalf. You can contact your IP Office to determine how to submit your application fees.

You can pay your application fees into the current account at WIPO, by credit card, by bank transfer, or by postal transfer (within Europe only). WIPO details the fee structure and payment methods on their website.

5. Track Your Application.

You can receive email notifications on the status of your application by filling in your email address in section 2 of Form MM2. This will automatically sign you up for WIPO's e-Notifications Service which electronically notifies you of anything concerning your application. You can also use the Madrid Monitor to check the status of your application by selecting "realtime search" in the left-hand column.

The Examination and Approval Process:

WIPO only conducts a formal examination of your application and, once approved, records your mark in the International Register and in the WIPO Gazette of International Marks. You will be sent a certificate of international registration and WIPO will then notify the IP Offices in all the territories that you have applied for a trademark in and send your application on to them.

The IP Offices will make a decision within 12 to 18 months, in accordance with their legislation. WIPO then records their decisions in the International Register and will notify you. If an IP Office refuses to protect your mark, it will not influence the decisions of the other IP Offices and you can contest the refusal directly before the IP Office concerned.

International trademark registration is valid for 10 years and can be renewed at the end of the 10-year period directly through WIPO.

The Effects of International Trademark Registration:

From the date of international registration, the protection of a mark registered through the Madrid Protocol is exactly the same as if it had been registered at the IP Office of the Contracting Party. However, a Contracting Party may decide to limit the trademark protection with regard to some or all of the goods or services or may decide to renounce the trademark protection with regard to some or all of the goods or services. This will only affect the territories of the Contracting Party and will not influence the decisions of any other Contracting Parties designated in the international application.