International Trademark Applications

In addition to obtaining federal registration of the mark in the United States by filing a trademark application with the U.S. PTO, international protection of the mark may also be obtained by filing an international trademark application with the World Intellectual Property Organization (WIPO), Geneva, Switzerland under the Madrid Protocol designating the WIPO contracting states where the mark is sought to be protected. Filing an international application under the Madrid Protocol saves the applicant time and money compared to filing individual trademark applications in each foreign country where the applicant seeks to register the mark.

The Madrid Agreement of 1891 and the follow-up Madrid Protocol of 1989 (hereinafter referred to as the “Madrid Protocol”) provides a mechanism for obtaining trademark protection in Madrid Agreement And Protocol treaty member countries by the filing and registration of one (1) trademark application with the World Intellectual Property Organization (WIPO), Geneva, Switzerland.

The Madrid Protocol is administered by the International Bureau of the World Intellectual Property Organization (WIPO), Geneva, Switzerland. Countries and organizations party to the Madrid System are each referred to as a “contracting party”. Under the Madrid Protocol, an applicant can register his mark in any member states by filing one international application directly with his country’s national trademark office. A single international application of a trademark simplifies the process of prosecution and maintenance of the international trademark, as a single prosecuted and allowed mark can be registered as a trademark in each Madrid Protocol member country that the applicant wishes to register the mark in. Once the international trademark application is allowed, the applicant can subsequently designate additional countries for registration of the international mark.

An international trademark application is required to be based on a prior foreign trademark application/registration or a trademark application/registration filed in the applicant’s country of origin. Usually, in order to get the priority date of the first trademark application, the applicant files the international application within two months of the filing or receipt date of the first filing.

To file an international application through the U.S. PTO as the office of origin, a trademark application for the mark is first filed with the U.S. PTO. When the serial number of the trademark application is received from the U.S. PTO (generally within a day after the mark is filed), an international application for the mark is filed with the Madrid Processing Unit, U.S. PTO. The international application must designate at least 1 foreign country where the mark is to be registered. The following fee is payable with the international application: U.S. PTO certification fee of $100 per class per mark, international application filing fee (approximately $650), and the individual country application fee for each country where the international mark is to be registered. The number of classes of products and services for the mark in the international application should be the same as identified in the basic national application or a subset of it.

On receipt of the international application, the Madrid Processing Unit, U.S. PTO examines the mark for preliminary compliance with the requirements of the International Bureau, WIPO. If the Madrid Processing Unit, U.S. PTO finds any deficiencies with the mark as filed, the Madrid Processing Unit, U.S. PTO issues a Notice of Irregularity to the applicant explaining the deficiency in the application, which the applicant can correct. If the Madrid Processing Unit, U.S. PTO finds the application in order, it certifies the international application and submits it to the International Bureau, WIPO, Geneva, Switzerland for examination.

On receipt of the international application by the International Bureau, the International Bureau reviews the international application to determine whether it meets the Madrid Protocol filing requirements. If the International Bureau finds that the filing requirements are met and the required fees paid, the International Bureau registers the mark, publishes it in the WIPO Gazette, and sends a certificate to the registrant. However, if the International Bureau finds any deficiencies in the international application, the International Bureau sends a Notice of Irregularity to the registrant. The applicant must respond to this notice within the time period specified in the notice. If the irregularities are rectified within the specified time period, the International Bureau registers the mark and issues a Certificate of Registration of the international mark to the applicant and records the registration in the International Register of Marks, Geneva, Switzerland.

After the international registration of the mark, the International Bureau requests each country designated in the international application to extend the trademark registration in their country. Pursuant to such request, the contracting Madrid Protocol parties are given 18 months to examine the international mark for an extension of protection in their jurisdiction and notify the applicant regarding any refusals to the mark. If any contracting party objects to the allowance and registration of the mark within 18 months after the filing of the international registration, the mark is provisionally refused registration in all the contracting states. The applicant is then given an opportunity to contest the non-allowance of the mark. If the registration requirements of the designated countries are met, the International Bureau sends the mark to the Office of Harmonization which forwards the mark to each of the countries where the mark is to be registered.

The Madrid Protocol also simplifies the management of the international mark after the mark is registered in one or more member states as it allows an applicant to record subsequent changes or to renew registrations by a single procedure with WIPO. Also, the Madrid Protocol allows the applicant to register the mark in additional member states subsequent to the registration of the mark in any member state at any point in time.