MarkIt to Market® - July 2019: Happy 30th Madrid Protocol - My How You've Grown!

Sterne, Kessler, Goldstein & Fox P.L.L.C.
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Sterne, Kessler, Goldstein & Fox P.L.L.C.

July 27, 2019 marked the 30th anniversary of the adoption of the Madrid Protocol – the centralized system for registering and managing trademarks worldwide. The Madrid system is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. While Madrid has its limitations, and may not be the best strategy for protecting every mark, the system has grown in reach and functionality over the past 30 years.

U.S. filers, initially skeptical when the U.S. acceded to the Madrid Protocol in 2003, have grown to embrace the Madrid system; by 2018 the U.S. was the top filer via the system. The U.S., along with China, is also one of the top designated countries for applications filed via Madrid applications. 

WIPO reports that there are now over 60,000 IR registrations on the books, and Madrid filings were up 6.4% in 2018. In 2018, the top company filers via the Madrid Protocol included well-known pharmaceutical, cosmetic, automobile, and consumer electronics companies. 

One major drawback to the Madrid system has historically been the absence of three of the major world economies – Mexico, Canada, and Brazil. However, Mexico joined in 2013, and Canada joined as of June 17, 2019. Brazil is now set to accede as of October 2, 2019. Particularly in light of the global reach of most brands in today’s economy, the Madrid Protocol can provide cost effective international trademark coverage, which is a necessary component of monetizing and protecting brands outside of the U.S.

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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