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.