International Trademark Filings

International Trademark Filings Made Cost-Effective Through the Madrid Protocol

The Madrid Protocol is an international treaty adopted to improve upon the system of international registration of Marks. It is coordinated by the World Intellectual Property Organization (WIPO). It allows a trademark owner of one of the signing countries to seek registration in any of the countries that have joined the Madrid Protocol. As of October 14, 2013, there are 92 member countries (to view a list of member countries go to www.wipo.int/madrid/en/members).

At the Law Offices of Joseph C. Messina, our lawyers are highly knowledgeable of the Madrid Protocol. We are a skilled trademark and intellectual property firm that keeps the best interests of its clients in mind at all times. For additional information on the Madrid Protocol or other trademark issues, contact our office by e-mail or call us at 914-381-2728 and set up a free consultation.

Under the Madrid Protocol, a trademark owner within a member country can file a single application (referred to as an "international application") in either English or French and seek protection in any of the countries that have signed onto the treaty. The international application will be filed in the local domestic trademark office of the Mark owner's country, which will be the United States Patent & Trademark Office (USPTO) for U.S. applicants.

How the Madrid Protocol Works

To file an international application through the USPTO, an applicant must have a pending U.S. application (referred to as a "base application") or a U.S. registration (referred to as a "base registration"). The USPTO will certify the international application based on the information in the base application or registration. The USPTO will then forward the international application on to the International Bureau (IB) of WIPO. The IB will conduct its own review of the international application to determine whether it meets the Madrid Protocol filing requirements. If it passes the IB review, then it will be published in the WIPO Gazette of International Marks. Next, the IB will notify the member countries designated in the international application of the request for an extension of protection. Again the international application will be examined, this time by each designated member country. If the application meets the standards of the respective countries, then the respective countries will grant protection of the trademark. An international registration endures for 10 years from the date of registration, and may be renewed for additional 10-year periods.

Advantages of Filing Through the Madrid Protocol

Filing your international trademark registrations through the Madrid Protocol system will save you a significant amount in costs and attorney fees. Filing fees are much lower, and attorney fees are reduced because it is not necessary to engage foreign counsel, unless an opposition proceeding arises in a particular country. In addition, the prosecution will take less time as there is a mandatory time limit for refusal under the Madrid Protocol. This time frame guarantees a quick response and makes it easier to plan marketing or sales abroad. Still another advantage is that applicants can designate new countries at any time. Moreover, filing through the Madrid system as opposed to filing directly in each foreign country will allow for more efficient record keeping and will ensure compliance with renewal dates and other post registration filings as it can be done in one central location. The Madrid system can be thought of as using a one-stop shopping method for international filings.

If you are interested in acquiring trademark protection abroad, get in touch with a New York international trademark filing attorney at the Law Offices of Joseph C. Messina today. Contact our office by e-mail or call us at 914-381-2728 to set up a free consultation. We represent clients located in New York, Westchester County, Stamford, Connecticut, and throughout the country.