After registering a U.S. trademark, you may want to extend trademark and brand protection to countries outside the U.S. around the world. Whether you see new business opportunities, want to expand into new markets, or simply want better trademark protection in the era of Internet-facilitated global commerce, registering your trademark internationally is a great fit for your business. It can be a valuable asset. Counterfeiting or otherwise improperly using your brand will likely result in lost sales and customers.
If you’ve done any research on international trademark protection, you’ve probably heard of the Madrid Protocol. In short, the Madrid Protocol is a treaty that spans over 80 countries, including the United States, and enables a streamlined trademark filing process for each of the Protocol’s member states. The Madrid Protocol simplifies this process of obtaining international trademark rights, but it is not a “global trademark” at first glance. With or without Madrid, expanding a US brand internationally still requires a lot of time, research, effort and money.
You should also be familiar with the trademark laws of each country applying through the Madrid Protocol. There is no set of rules that can be followed through a central authority. If you are considering using the Madrid Protocol for your international application and want to know more, let’s take a look at four key things to keep in mind.
There is no single trademark application that provides trademark protection in all countries.
Filing through the Madrid Protocol allows you to file in up to 80 countries, but it is not a global trademark application. A filing fee must be paid for each country in which the trademark is filed. Even after a trademark application is filed, it must go through the filing process in each country to determine if it is registrable in that country. It is a common misconception that the Madrid Protocol is a quick and easy way to obtain international trademark protection. In practice, Madrid Protocol trademark filings are not as comprehensive or localized as specified (and paid for). Finally, there are very large countries that are not members of the Madrid Protocol, and protection may not be available in these countries unless you apply directly through a local lawyer (Canada, Mexico and Brazil are members of the Madrid Protocol). the largest country on the protocol). not yet a member of the Madrid Protocol).
Your international trademark application (application under the Madrid Protocol) remains subject to approval or rejection by individual governments.
The Madrid Protocol saves time as he only has to submit one application to the central clearinghouse and the application is submitted in each country where he has paid individual application fees. However, the central clearinghouse does not offer bulk approval or rejection. It serves the purpose:
Save time by getting your application where you need it (and avoid having to translate your application for each country). Once a trademark application is received by each government, each local government must examine the application and register or reject the trademark based on local law and existing trademark registrations in that country.
Different countries have different trademark laws, so you may need to adapt to changes
Applying for international protection of a trademark requires more attention to its registration in the United States.
When applying for international protection of a trademark through the Madrid Protocol, the international application and subsequent registration are all dependent on the viability and soundness of the registered US trademark. Registrations in other countries if the U.S. trademark is revoked during the first five years of an international mark granted through Madrid or lost due to inactivity or inadequate defense against attack on U.S. registrations is also cancelled. Direct filing with national trademark offices. Therefore, it is very important that a trademark attorney monitor your U.S. registration to ensure that it remains valid and enforceable.
The Madrid Protocol does not always save money when registering trademarks internationally. Filing an international trademark application via the Madrid Protocol is much cheaper than hiring a local attorney in each country to file one application at a time. However, since the Madrid Protocol is not a single “global trademark application,” each country filing through the Protocol must ensure that its trademarks do not conflict with local registrations and comply with all local regulations. If any of these conditions are not met, you are likely to receive a first rejection, and even then, you will need to hire a local attorney to deal with your local trademark office.Trademark Complexity and Related Issues Depending on your situation, we recommend that you submit your application to a local attorney to ensure a smoother process.
For more information on applying for international trademark protection, contact her trademark attorney, by completing the contact form on this website.