How to: Madrid Protocol, an International Trademark - Legal Counsel Guides 10
Eduard Grigoryan
International Legal Counsel (PQE 7) | Ph.D. in Law Candidate | LL.M. in International Private Law | SQE Candidate
Imagine a company called "XXX LLC" based in the United States that designs eco-friendly technology products. EcoTech wants to expand its market to Europe and Asia. Without the Madrid Protocol, XXX LLC would need to file separate trademark applications in each country it wishes to enter, such as France, Germany, China, and Japan. This process would be time-consuming and expensive, involving multiple legal fees and translations.
Using the Madrid Protocol, XXX LLC can:
1. File a single international application through the United States Patent and Trademark Office (USPTO), designating the countries where they seek protection.
2. Pay one set of fees instead of multiple fees for each country.
3. Manage their trademark registrations centrally through WIPO, making it easier to handle renewals and modifications.
Educational purposes only, not a legal advice.
What is a Trademark under the Madrid Protocol?
A trademark under the Madrid Protocol is a way to register a trademark internationally through a streamlined process managed by the World Intellectual Property Organization (WIPO). Instead of applying for trademark protection separately in each country, the Madrid Protocol allows you to file one application, in one language, and pay one set of fees to seek protection in up to 130 countries.
Why Do We Need the Madrid Protocol System?
The Madrid Protocol simplifies and reduces the cost of securing trademark protection internationally. Here's why it's beneficial:
1. Centralized Application Process: With one application, you can extend your trademark protection to multiple countries, avoiding the need for separate filings in each country.
2. Cost-Effective: It reduces the administrative and financial burden associated with filing separate national applications.
3. Ease of Management: Once registered, you can manage your trademark portfolio through WIPO's centralized system, including renewals and changes.
1. Understand the Madrid Protocol Requirements
Basic Registration: Ensure you have a basic trademark application or registration in your home country.
Eligibility: You must be a national or have a business in a Madrid Protocol member country.
2. Prepare Your Application
Forms: Use the appropriate WIPO forms, primarily Form MM2 for the international application.
· MM2: Application for international registration.
· MM13: Record a trademark license.
· MM14: Amend a trademark license.
· MM15: Cancel a trademark license.
· MM18: Declare intention to use the mark (for the USA).
· MM19: Restrict holder's right of disposal.
· MM20: Request 'continued processing'.
· MM22: Divide an international registration.
· MM23 & MM24: Merge international registrations.
Trademark Details: Include a clear representation of your trademark.
Classification: Classify goods and services according to the Nice Classification.
3. File the International Application
Office of Origin: Submit your application through your home country's IP office.
Certification: The Office of Origin certifies and forwards your application to WIPO.
4. Fees
Basic Fee: 653 Swiss francs (or 903 Swiss francs for color marks).
Complementary and Supplementary Fees: These vary depending on the number of designated countries and classes of goods/services. Some countries charge an individual fee instead.
Fee Calculator: Use WIPO's fee calculator to estimate your costs before filing.
Direct Payments: Submit fees directly to WIPO via bank transfer, credit card (for some fees), or through a WIPO current account.
Office of Origin: Some offices may collect and forward fees to WIPO on your behalf.
5. Examination by WIPO
Formal Examination: WIPO checks for formality compliance and issues a certificate of international registration if compliant.
6. Examination by EUIPO
Substantive Examination: The EUIPO examines the trademark for conflicts with existing trademarks and other EU regulations.
Opposition Period: After publication, a three-month period allows for oppositions.
7. Granting Protection
Successful Registration: If no oppositions are filed or are resolved, the EUIPO grants trademark protection.
Certificate Issuance: A certificate of protection will be issued.
8. Managing Your Trademark
Renewal: Trademarks must be renewed every 10 years.
Changes: Any changes (ownership, address, etc.) must be recorded using the appropriate WIPO forms.
Monitoring: Actively monitor for potential infringements and be prepared to enforce your rights.