The Madrid Protocol was established in 1989 by the Madrid System relating to the Madrid Agreement (1891). The Madrid Protocol allows a trademark applicant to file a single international registration for a trademark or service mark. The Madrid Protocol is administered by the International Bureau of World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. Countries and organizations party to the Madrid Protocol or Agreement, each referred to as a ‘contracting party’, are part of the union called the Madrid Union. With an international trademark registration, a trademark applicant can register a trademark or service mark in any of the contracting parties that the trademark applicant designates for protection. A single international trademark prosecution and allowance of the mark allows registration of the mark in any of the 80 Madrid Protocol member countries. Once an international application is allowed, the trademark applicant can subsequently designate more countries for trademark registration through the international trademark registration.
An international trademark application is required to be based on a prior foreign trademark application or trademark registration or a trademark application or trademark registration filed in the trademark applicant’s country of origin. Usually, in order to get the priority date of the first trademark application, the trademark applicant should file the international trademark application within two months of the filing or receipt date of the first filing of the trademark application. For example, to file a trademark in the European Communities (EC) through the US trademark office as the office of origin, a trademark application for the trademark is first filed the U.S.PTO. Thereafter, an international trademark application designating the European Communities is filed with the Madrid Processing Unit of the U.S.PTO. The Madrid Processing Unit then certifies the international trademark application and submits it to the International Bureau for examination.
After confirming receipt of the international trademark application, the International Bureau reviews the trademark 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 trademark, publishes it in the WIPO Gazette and sends a certificate to the trademark registrant. The fees required by the International Bureau is calculated based on whether the reproduction of the mark is in black and white and/or color, the countries designated in the trademark application and the number of classes of products and/or services specified in the international trademark application. The number of classes of products and services should be the same as identified in the basic foreign trademark application or a subset of it.
However, if the International Bureau (IB) finds any deficiencies in the trademark application, the IB sends a Notice of Irregularity to the trademark registrant explaining the deficiency in the trademark application. The trademark applicant is given an opportunity to 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 trademark. After the international trademark registration, the International Bureau requests each of the designated countries to extend the trademark registration or protection in their region/country. After the request, the contracting parties are given 18 months to examine the request for an extension of protection and notify with refusals to the mark (if any). If the trademark registration requirements of a designated country are met, the particular contracting party registers the trademark in its country.
For further details, visit Filing An International Trademark Application Under The Madrid Protocol.