In Part 1, you learned that you can register your trademark in foreign country by submitting individual applications in each country desired under the rules of that country. In Part 2, you will learn about a less expensive and time-consuming way of achieving the same coverage by utilizing the Madrid System, a set of international agreements.
Part 3 expands on the exploration of the Madrid System by explaining who can get trademark protection by using the Madrid System and in what countries. Part 4 details some advantages and disadvantages to using international applications under the Madrid System.
What is the Madrid System?
The Madrid system is a combination of two international agreements, the Madrid Agreement and the Madrid Protocol. The countries that have signed these agreements grant reciprocal rights to one another with regard to applications for trademark registration. Each allows an applicant to submit a single international application designating a number of countries in which trademark protection is desired.
This international application is examined individually by each designated country to determine whether the trademark is entitled to protection under the laws of that country. To use the Madrid Protocol or Agreement, both the country of origin and each desired foreign country must be signatories of the same agreement.
What are the Madrid Examination Procedures?
To file an international application, there must first be a domestic (or “basic”) trademark application or registration. Under the Madrid Agreement, only trademark registrations can be the basis for an international application, not applications. This is the primary difference between the two agreements and the reason that the Madrid Protocol is more popular. The international application must be filed in the same country as the basic application or registration.
This “Office of Origin” receives and certifies the international application and then transmits it to the International Bureau of the World Intellectual Property Organization (WIPO), which administers the Madrid System, for processing and initial examination.
The application is examined by WIPO to ensure that the application complies with the requirements of the Madrid System, including those relating to the listing of goods and services and their classification, and that the required fees have been paid. The Office of Origin and the applicant are informed of any irregularities, which must be remedied within three months to avoid abandonment. When the international application is in compliance, the mark is recorded in the International Register and published in the Gazette.
WIPO then notifies each Contracting Party in which protection has been requested and the application is then examined by each designated country individually. Each country’s trademark office applies its own rules in evaluating the application and is free to accept or reject it on its own terms. Any subsequent interaction with a foreign trademark office is conducted directly between the applicant and the office as normal, and will typically require the assistance of counsel in the country in which the office is located.
On to Part 3- Madrid Union Membership
More Madrid Protocol and Madrid Agreement Resources
The WIPO Madrid System for the International Registration of Marks page
The USPTO Madrid FAQ page
The Wikipedia Madrid System entry
Anything I left out? Please leave your questions in the comments, or you can ask me directly on twitter, facebook, or by phone or email.
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