Are you seeking international protection of your trademark?
If so, you have two options:
- Making an individual application within each foreign jurisdiction
- Making an application through the International Trademark System (the “Madrid System”)
This post will focus on the latter.
What is the “Madrid System”?
The International Trademark System or the “Madrid System” is a streamlined process to file trademarks internationally. It can offer you international protection in up to 124 countries via one application.
Who can use the “Madrid System”?
The system is available to you if you have a business or personal connection in any one of the system’s contracting parties. The contracting parties (jurisdictions) are those of the the Madrid Agreement and Madrid Protocol. A list can be found here.
How do you start an application?
Before you can utilize the international route, you should have a standard trademark application. You have 5 years to apply for international protection and you need to make a choice in which jurisdictions you would like to have your trademark protected (“International Registration”). If you make the international application within six months of the national application, you can benefit from priority rules. This is useful if a competitor tries to file a similar mark in your chosen foreign jurisdiction within the six months between your national application and your international application.
Goods and/or services requirements
Just as with a single national application, you must indicate the classification of goods and/or services associated with the trademark. Within the international registration, the list of goods and/or services must be the same or narrower than that of the initial “national” application.
Advantages:
You only need to file one application to receive international trademark protection in multiple jurisdictions. This can significantly reduce the costs of having to file many individual applications abroad. Equally, the renewal process is also central.
Additionally, if the home national trademark office raises no objections, and nobody files any oppositions, you do not need to appoint a local representative in other jurisdictions.
Disadvantages:
An international application depends on the national application for a period of five years from the registration date of the international right. Therefore, vitally, if your national filing is cancelled or abandoned in this period, your international registration(s) will also be cancelled or abandoned. Whilst the international registration(s) could be converted into a national registration(s), you would incur application fees for each application. In this case, you would lose the cost advantage of filing one application.
