Tips to Avoid the Pitfalls for Madrid Protocol Trademark Applications

While the recently enacted Madrid Protocol System allows trademark owners to seek protection for their respective marks in multiple countries by filing a single application, there are some pitfalls to avoid.

For large-scale coverage of your trademark in many countries, you may want to consider filing an application for an international Madrid Protocol trademark registration. Benefits of the Madrid Protocol registration include the filing of a single application designating many countries, one expiration date, and one place for renewal and for filing changes of names/addresses, license agreements, assignments, etc. As long as the application meets all formal requirements, the filing date of the Madrid Protocol application is the date of registration. The cost of a one-class application filed directly with all 78 Madrid Protocol countries would be around $70,000 US, whereas a Madrid Protocol application designating all the member countries is only about $18,000 US.

However, a few issues have been encountered with the Madrid Protocol system.

* An application must be based on a valid home (e.g., United States) application or registration. (The international registration is dependent on the home application for five years, after which it stands alone.)
* The classification and identification of goods/services in the international application must be identical to the home application. This can create problems if not considered ahead of time, because an acceptable goods and services identification internationally varies somewhat from an acceptable goods and services identification in the United States.
* Some foreign trademark offices will correspond directly with the client, even though a foreign agent has been retained.
* Notifications of partial or total refusal from designated countries are transmitted to the International Bureau and then to the foreign agent, in some cases leaving a short time between receipt of the Notification and the deadline for responding.
* Some countries publish the Notifications, giving rise to solicitation letters from foreign associates. To respond to the Notifications, the services of a foreign agent must be secured.

Strong consideration can be given to the Madrid Protocol system if you desire widespread trademark coverage, especially where cost is a concern. Many countries automatically extend the international registration into their country without further examination. Even though a foreign associate may be needed for responding to a refusal, cost savings can still be realized at the filing stage.

Please contact us if you are interested in further information regarding the Madrid Protocol.