The Madrid System Is Expanding: Is Your Trademark Portfolio Covered?


As more countries join the Madrid Protocol System for the International Registration of Marks (Madrid System), trademark owners should be sure to take full advantage of this trademark registration option.  There are now 89 members of the Madrid System.  Significantly lower application and maintenance costs, as well as streamlined portfolio management options, are just a few of the reasons why the Madrid System is advantageous for trademark owners. 

In 2012, Colombia, New Zealand and the Philippines joined the Madrid System and on February 19, 2013, Mexico will become a member.  Other countries that recently joined include Egypt, Israel, Croatia and Vietnam.   

Because most jurisdictions recognize trademark rights on a first-to-file, rather than first-to-use, basis, it is important that trademark filings stay up to date as businesses expand.  Extending an existing Madrid System registration to new countries is extremely cost-effective; often the filing costs are at least 50% lower than the cost of in-country filings, and the renewal and assignment costs provide even greater savings.  Therefore, as new jurisdictions join the Madrid System, consider taking advantage of this opportunity for a new or expanded Madrid System filing.  Before Mexico joins the Madrid System this month, we recommend evaluating your portfolio to take full advantage of this opportunity.  

  • Strategic Filing Considerations:  Periodically, every brand owner should evaluate its trademark portfolio to ensure that its key brands are protected in connection with its key goods and services in every jurisdiction of importance.  If new filings are needed, the next step is to strategically select the type of trademark application that will maximize the brand owner’s trademark portfolio in a cost-effective manner.  In many cases, the Madrid System is a wise choice, but not always.
  • Strategic Timing Considerations for Mexico:  Carefully consider the timing of any new applications in Mexico.  It may be cost-effective to wait until February 19, 2013 to file applications through the Madrid System.  However, Mexico will likely receive a large volume of trademark filings on February 19, 2013, and some of these trademark filings may conflict.  To gain an advantage, you could elect to file traditional trademark applications in Mexico before February 19, 2013 to have seniority over the anticipated new Madrid System filings.  In short, there are numerous factors that should be considered to maximize your international trademark protection.  With the addition of Mexico to the Madrid System, this is an opportune time to consider how this system can be used to your advantage.  Contact counsel for assistance with developing and implementing, or expanding upon, a strategic trademark filing plan that is customized for your business needs and objectives.

Topics:  First-to-File, International Trademark Protection, Madrid Protocol, Trademarks

Published In: Intellectual Property Updates, International Trade Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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