ENGLISH
GERMANMadrid Protocol – An Overview
By – Christopher J. Menke, Shareholder – Urban Thier Federer & Chinnery, P.A.
The Madrid System of international trademark registration is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement) and the Protocol Relating to the Madrid Agreement (Madrid Protocol). The international registration system is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
The Madrid Protocol became effective in the United States in November 2003. As of September 2009, 79 countries have joined the Madrid Protocol. These countries are known as the Contracting Parties.
The Madrid Protocol is a cost-effective and efficient means for trademark owners, both individuals and businesses, to protect their marks in a variety of Contracting Parties by filing one trademark application with the IB of the WIPO. When certain criteria are met, the IB issues an International Registration. However, each Contracting Party designated for protection determines whether or not protection for a mark may be granted. As such, the Madrid Protocol is a trademark “filing” treaty, not a trademark “granting” treaty.
To apply for an International Registration with the IB, an applicant must be a national of, be domiciled in, or have a real and effective commercial establishment in, one of the Contracting Parties. The international application must be based on one or more trademark applications or registrations from the Trademark Office of a Contracting Party (“basic application” or “basic registration”). The mark in the international application must be the same as the basic application (or basic registration). Likewise, the identification of goods/services in the international application must be similar or narrower than in the basic application (or basic registration).
After filing the international application in the Trademark Office of a Contracting Party, the Trademark Office reviews the application to ensure certain criteria are met. If so, the Trademark Office forwards the international application to the IB, where the IB performs its own determination of whether the application meets Madrid Protocol filing requirements. Once the requirements are met and fees are paid, the IB registers the mark, publishes the mark in the WIPO Gazette of International Marks, and notifies the Offices of the Contracting Parties designated in the international application.
Without the need for the trademark owner to file more paperwork and pay more fees, each designated Contracting Party will examine the request for an extension of protection under the laws of that Contracting Party. If the Contracting Party does not notify the IB of any refusal of trademark registration within 18 months, the owner of the International Registration is automatically granted protection of the mark in that country.
Using the Madrid Protocol can save individuals and businesses time and money when securing trademark protection in many countries around the world.
Contact Christopher J. Menke to protect your trademark or service mark under the Madrid Protocol.
Filed under the Intellectual Property Law category.
