International Trademark Protection – The Madrid Protocol

Posted by on Nov 12, 2013

There are multiple ways to protect your brand overseas, but the most commonly referenced method is the Madrid Protocol.  The United States is a signatory to the Madrid Protocol, an international treaty that covers the mutual recognition of trademarks by its various member nations.  In broad scope, it provides a single, relatively convenient way for a trademark holder to obtain protection in multiple nations.

Domestic Registration

The first basis for international protection is receiving a valid trademark in one’s own country.  Actually the treaty is slightly more complicated than that, because theoretically one could obtain protection in a foreign country and then use that as a basis of international protection – but for our purposes, we will ignore that scenario.  Thus the first step for an entity in the United States would be to obtain Federal registration of their trademark.  In some circumstances, international protection under the Madrid Protocol may be based on an application for United States Federal registration as well (and vice versa for non-US applicants.)

Selecting the Office of Origin

The next step is to select the Office of Origin.  The Office of Origin is simply the Trademark Office responsible for the prosecution of the international application.  Now, the actual WIPO/TRIPS and Madrid Protocol language is rather dense and confusing on this point.  There are many hypothetical scenarios and considerations laid out.  There are three basic ways to establish an Office of Origin – establishment, domicile, or nationality.  Establishment can be thought of as the country in which the trademark seeker does business.  Domicile is where the applicant lives (with slightly different rules for corporations.)  Nationality is the country of which the applicant is a citizen.  There can, under any scenario, but only one Office of Origin.

The rules are written as such, presumably, to cover scenarios where applicants’ countries of establishment, domicile, and nationality are not all signatories of the Madrid Protocol, thus allowing applicants flexible ways to still obtain international protection.  For our purposes, for US applicants, the Office of Origin will generally be the same United States Patent and Trademark Office (USPTO) that handles regular trademark applications.

The International Application

The international application must be based upon registration (or application) with the Office of Origin.  In practice this simply involves selecting the correct form for international application, designating the USPTO as the Office of Origin and making all appropriate references to the Federal register and paying any necessary fees.  Just like a domestic application, there are spaces for the biographical information of the author, identification of the mark, and many other types of routine data.

One unique feature is the designation of “Contracting Parties.”  This means the applicant checks the boxes next to the name of Countries in which the applicant wishes to receive trademark protection.  The EU may be designated as a contracting party, subject to some additional requirements.

The applicant may claim priority of use of the mark by inserting references to the domestic registration in the country of origin.  This domestic reference will serve as a priority date in all Madrid Protocol countries.

Examination

Simply filing an international application does not guarantee receiving trademark protection in each designated country.  As the USPTO notes, “The protocol is a filing treaty and not a substantive harmonization treaty.”  Instead, the mark must undergo any substantive examination required by that country.  In practice, most other countries do not have the “Use” requirement that the United States does, thus this element of substantive examination is generally more of a problem for non-US applicants seeking US registration than vice versa.

Non-US applicants may receive US protection via the international application even if they have not used the mark in the US prior to application (they may satisfy the use requirement based on intent to use), however once they receive US protection, the Lanham Act applies in full effect to their mark.  This means that they must make actual use in the US within three years or the statutory presumption of abandonment will likely go into effect.