International Trademarks: Madrid Protocol

For US companies, the Madrid Protocol can be a low-cost and time-efficient way of getting international trademark protection.

The internet makes it almost trivial to sell products and services internationally.  But how do you manage the IP for these products and services? The legal system has been lagging here. The 1970’s (pre-internet) PCT system simplifies the process of filing international patents. But, the underlying international patent system still remains cumbersome and expensive.  This is because you still have to work with local patent offices. These, in turn, require you to work with local law firms.

What is the situation in trademarks?  Almost reasonable!  This is because, in the early post-internet era, the international trademark system got a major upgrade, called the Madrid Protocol. So if you are a startup wanting to protect your trademark rights internationally, the Madrid Protocol is a reasonable and cost-effective way to do so.

The Madrid Protocol is a 1996-era refinement of an earlier 1891 Madrid trademark agreement.  The US and over 90 other countries (EU included) are presently members (see the darker countries on the world map). Brazil and Canada also recently joined in 2019.

Advantages of the Madrid Protocol

The main advantage of the Madrid Protocol is that the applicant needs to only file once in the WIPO Madrid system in order to apply for trademark applications in a variety of different countries (such as the entire European Union at a single time).  The application fees, at least by patent standards, are reasonable (e.g. about $1600 to apply for full EU coverage).  This system minimizes the hassles and expense of hiring local law firms and dealing with local trademark offices in each country.

Foreign applicants don’t have to show US use in commerce

There are some differences between US trademark laws and most international trademark laws. The US requires that before a mark can register, applicants must submit proof of US use in commerce. Internationally, this not required. In order to be compatible with international practice, the US agreed to waive proof of US use in commerce for foreign (Madrid) applicants. Thus foreign applicants with a prior foreign registration need merely attest that they have a bona fide intent to sell in the US, but need not have actually done so.

This can have interesting interactions with other US laws, such as the Dupont factors used to determine the possibility of confusion between marks. Dupont factor 2, for example is a test comparing the similarity of a given mark with a prior mark that is in use. So is a US mark, registered only on the basis of prior international registration, actually “in use” in the US?

Other Madrid filing issues

There are a few other issues – the applicant must be associated with a Madrid subscribing country.  You can’t start from scratch. Instead you should have at least one national trademark application pending to use as the basis of your Madrid application.  US applicants, for example, can use their pre-existing US trademark to file for Madrid coverage through the USPTO. The USPTO will check this Madrid application, and then forward it to the WIPO office in Geneva, Switzerland.

Some other cautions — in the event that your original national trademark application fails within the first five years after filing, your other Madrid filings will likely also fail. Additionally, the various local countries that you designate do have the right to refuse your trademark on an individual basis within the first 12-18 months after filing.

So you should do some additional research before filing.  At a minimum, check the WIPO trademark database for conflicts within your trademark class. Check if your US trademarks might be “generic” or otherwise inappropriate in your Madrid target countries.  You also need to renew your Madrid Protocol filings every 10 years. So remember to put this on your long-term calendar as well.

Illustration: Madrid Protocol countries (US color or darker is “in”)