How to protect your mark internationally? Considerations on the Madrid System

Rothwell, Figg, Ernst & Manbeck, P.C.
Contact

Nowadays, the concept of business can rarely prescind from globalization. But the rules and regulations that provide Intellectual Property protection have not always been able to keep up with the internationalization of business. Because generally Intellectual Property protection is afforded on a country-by-country basis, the idea of safely expanding your business internationally may seem overwhelming. Pair this with the increasingly fast pace of the markets and the process may appear even more daunting.

Trademarks – as opposed to other Intellectual Property – draw their strength from being in the public eye, recognized by as many people around the world as possible. As a result, protection may prove necessary even in markets that do not necessarily constitute the core areas of interest for your business.

With this in mind, the World Intellectual Property Organization developed the Madrid System: a treaty that is a convenient and cost-effective solution to request protection of a trademark in 122 countries with one single application (list of countries here). It is important to note that, while the application process is centralized, the single Intellectual Property Offices of the designated countries are still in charge of examining their individual application.

This sounds great, but what are the steps?

At first, it is necessary to file a trademark application in your home jurisdiction. If you live in the U.S., that would be a U.S. trademark application with the United States Patent and Trademark Office (USPTO). This U.S. application will be the basis for your International Application. Note that filing is sufficient, you do not need to wait for your U.S. application to be examined or granted before you can utilize the Madrid System.

With a U.S. application on file, it is key to identify the foreign countries of interest for your business and verify that these countries are signatories to the Madrid System. While it is advisable to include as many countries of interest at the outset, being over-inclusive can lead to additional costs. This is because each country will examine the application, and if refusals are issued, it will be necessary to hire local counsel to try and overcome them. What is helpful is that it is possible to extend protection to additional countries at a later stage. But there are some limitations.

What are the limitations of an International Application?

The main limitation is that it is tied to the U.S. application. This means that if the U.S. application is refused, or the subsequent U.S. registration is cancelled within the first five years, so is your International Application.

In addition, the International Registration (and all the Registrations that depend from it in the designated foreign countries) cannot go beyond the scope of the initial U.S. application. Essentially, the International Registration cannot cover goods and services that are not included in the U.S. application.

Once granted, the International Registration is effective for 10 years and needs to be renewed every 10 years. What is important to remember, however, is that since the single International Application – if successful – results in a registration for each of the designated foreign countries, some of these subsequent registrations are subject to the specific national legislation for all requirements, including renewal periods.

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.

© Rothwell, Figg, Ernst & Manbeck, P.C. | Attorney Advertising

Written by:

Rothwell, Figg, Ernst & Manbeck, P.C.
Contact
more
less

Rothwell, Figg, Ernst & Manbeck, P.C. on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.