The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, also known as the Madrid Protocol, is an international trademark treaty that allows for residents of any member country to file a single international trademark application. The treaty only covers trademark registration, however, and does not guarantee the trademark’s effectiveness across the variety of member states’ legal systems. The primary advantage of the Madrid Protocol is that an applicant can file a single form with one set of fees through a single office.
As of November 2, 2003, the Madrid Protocol took effect in the United States. Under the Madrid Protocol, U.S. trademark owners can submit international applications to the International Bureau in Geneva, Switzerland through the United States Patent and Trademark Office. Foreign parties can also seek protection for their trademarks in the United States. Through the Madrid Protocol, a trademark holder can register their trademark in 84 member countries or contracting parties.
To submit an application through the USPTO, a trademark holder must file an application or register a trademark with the Office and have a domicile or industrial or commercial establishment in the United States. The international application requires a basic or U.S. application, and both the mark itself and the owner must be the same for the international and U.S. filings. An international application can cover several U.S. trademarks, provided they meet the requirement for uniform marks and owner. All applications need to be filed through the U.S. Patent & Trademark Office in order to certify that U.S. and international applications contain the same information. All international applications can be filed electronically via the USPTO’s website or on paper using the official form from the International Bureau of the World Intellectual Property Organization.
The USPTO’s certification is only to ensure that the international application is grounded in a U.S. application or registration. Any international application is still reviewed for Madrid Protocol standards by the International Bureau. Once the International Bureau confirms a trademark, it will be published in the WIPO Gazette of International Marks and a certificate will be sent to the trademark holder. Once the International Bureau registers the trademark, they notify each Contracting Party identified in the application and request protection in that country. These countries will then decide whether the trademark is eligible for protection under their laws. If a trademark meets their requirements, then it will receive protection.
International registration lasts for a 10 year period from the date of registration, and registration can be renewed in 10-year increments through the International Bureau. The trademark’s record may also be edited more easily in cases where the owner changes. In addition, a trademark holder may extend protection to further countries more easily through the International Bureau.
Registration fees can range from $750 for a black and white trademark in one country to over $17000 for a full color trademark in every member country. Since the International Bureau is located in Geneva, the international filing fees must be paid in Swiss Francs.
If a U.S. registration is refused, withdrawn, cancelled, or restricted within the first five years of registration, the International Bureau will cancel the international registration. After the first five years, as long as the U.S. application’s failure is not grounded in the first five years of registration, the international registration will be treated separate from the U.S. application.
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