In Part 4, the concluding post of this series, I examine the advantages and disadvantages of the Madrid System and make a cost comparison with ordinary filings.

What Are the Advantages and Disadvantages of Filing an Application Under the Madrid Protocol or Agreement?

The main advantage of using an international application is the reduction in time and expense over filing multiple individual applications. Only one application has to be prepared and submitted, which saves more time and attorney’s fees the more countries you want protection in. You only need to use one law firm, your domestic firm, unless you have a problem in one of the individual countries, reducing the number of lawyers you have to pay.

The system also greatly simplifies administrative tasks like making changes to the name or address of the applicant or renewing foreign registrations. With the Madrid System, such changes can be made across all countries of registration with a single administrative process, saving a great deal of time and money and reducing the chances of overlooking an application or making a mistake in one of the filings.

The main disadvantage is that an international application is dependent on the domestic application or registration on which it is based. A refusal, withdrawal or cancellation of the domestic application or registration within five years of the registration date of the international registration will result in the refusal, withdrawal or cancellation of the international registration to the same extent. This leaves the trademark owner vulnerable to a “central attack” of its trademark in the country of origin.

What is the Cost of an Application under the Madrid Protocol or Agreement?

There is an initial fee charged by the country of origin for receiving, certifying, and transmitting the itnernational applicaiton. In the United States, this fee is $100. The applicant must also pay fees directly to WIPO to cover both its examination and the examination conducted bye ach of the designated countries.

The schedule of fees due under the Madrid System can be found here and the fees of individual designated countries can be found here. These fees are charged in Swiss francs (CHF) and generally are 653 CHF for an application without color in up to three classes, or 903 CHF for a color mark, plus an additional 100 CHF for each designated Contracting Party (country). Some countries, as indicated here, charge their own fee for their designation instead of the default 100 CHF. The Swiss franc at the time of this post was 0.92 USD.

As an example, the cost of filing an international trademark application for a black and white mark in the United States designating China, Japan, and Korea would be $100 + 653 CHF + 310 CHF (China’s individual fee) + 140 CHF (Japan’s individual fee) + 223 CHF (Korea’s individual fee). The total official fees would therefore be approximately $1220. Add in the cost of your U.S. attorney and you are looking at $1,500-$2,000. By way of comparison, you can expect to pay $1,500-$2,000 for each application if submitted individually.

Thus, even when only a few countries are designated and even where these countries charge more than the typical 100 CHF, an international application can result in significant cost savings. Add in the savings from future renewals and other administrative costs and the difference becomes even more substantial.

Thus, in many instances making use of the Madrid System to achieve international trademark protection can greatly reduce your expense and decrease the likelihood of errors. In most cases these advantages outwiegh the disadvantage of vulnerability to central attack, making Madrid applications a valuable tool in your trademark arsenal.

Leave your questions and additions in the comments.

In this post, Part 3, I will continue the explanation and analysis of the Madrid System by detailing who can file using the Madrid System and in what countries trademark protection can be obtained. In Part 4, the concluding post, I examine the advantages and disadvantages of the Madrid System and make a cost comparison with ordinary filings.

What Countries Participate in the Madrid System?

There are 84 members of the Madrid Union (countries who are members of the Madrid Protocol and/or Madrid Agreement). The Madrid Protocol boasts 74 members and the Madrid agreement 56- 46 countries are members of both. The full list of member countries can be found here. An international application under the Madrid System must originate in a member country and each country designated for protection in the application must also be a member.

The United States is a member of the Madrid Protocol, but not the Madrid Agreement, and therefore U.S. applicants may not designate countries that are members of the Madrid Agreement only.

Some countries that are not members of the Madrid Union include Canada, Mexico, New Zealand, South Africa, India, Pakistan, Hong Kong, Taiwan, Malaysia, the Philippines, Indonesia, Thailand, Israel, and most of Latin America. Trademark protection in these countries can only be achieved by individual applications.

Who Can File an Application Under the Madrid System?

An applicant using the Madrid System must be “a natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of” a country that is a signatory to the Madrid Agreement or Protocol. The applicant must initiate their international application in such a country.

On to Part 4… If you have any questions or additions to the material above, let me know in the comments.

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.

Your first step should be applying to register your mark in your home country (assuming you will do business there). Then you have a choice- you can file individual applications in each country you need, or you can file an international application under the Madrid Agreement/Protocol. This post explains the use of individual, regular applications, where the next post will delve into the details of international trademark applications.

Applying for Trademark Registration in Individual Foreign Countries

Foreign Registration Procedure

A U.S. attorney cannot file a trademark application overseas. For that, you need a lawyer of the country in which the application is to be filed. Most U.S. law firms have a network of foreign “associates”, or law firms in other countries that they work with when something needs to be filed in another country.

These foreign associates are familiar with the local rules and will be sure to place your application in the appropriate format before it is filed. Your U.S. attorney, who is familiar with your circumstances and with the corresponding U.S. application, will generally continue to control the foreign application for you, acting through their foreign associate.

Foreign Trademark Application Priority

If your foreign application is filed within six months of your application in the U.S./your country of origin, it will generally be entitled to the priority of your U.S. application and assigned a priority filing date. That means the application will be examined as if it were filed on the same date as the U.S. application. Most countries are members of treaties that provide for this priority claim, however not all are. The foreign associate will know whether a claim of priority is appropriate.

Foreign Trademark Application Examination

Trademark application are generally subjected to less rigorous examination in countries other than the U.S. Many countries do not have a rule against descriptive trademarks and allow very broad listings of goods and services.

Costs of Foreign Trademark Applications

Filing individual trademark applications in ever foreign country of interest can be expensive. In addition to each country’s filing fees, you pay for two levels of attorneys, your U.S. attorney and the foreign associate. Typical costs can be $1,500 per country just to get the application filed.

Any questions about protecting trademarks in foreign countries? Let me know in the comments.

On to Part 2 (International Applications Under the Madrid System)