Justice due knows no boundries.Tel: 202-331-7900

Seek Global Trademark Protection Under the Madrid Protocol

An international treaty called the Madrid Protocol makes it much easier for Americans to obtain international protection for their trademarks. It allows a trademark owner to seek registration in any of the participating countries by filing a single application, called an “international application.” The International Bureau of the World Intellectual Property Organization, which is located in Geneva, Switzerland, administers the system.

This list includes just some of the member countries of the Madrid Protocol and the year they joined.

Algeria, 2015

Armenia, 2000

Australia, 2001 Belgium, 1998
Austria, 1999 Belarus, 2002
China, 1995 Cuba, 1995
Denmark, 1995 Egypt, 2009
Finland, 1996

France, 1997

Ireland, 2001 Israel, 2010
Japan, 2000 Kazakhstan, 2010
Kenya, 1998 Latvia, 2000
Liberia, 2009 Morocco, 1999
Netherlands, 1998 Norway, 1996
Oman, 2007 Philippines, 2012
Poland, 1997 Singapore, 2000
Spain, 1995 Switzerland, 1997
Turkey, 1999 United Kingdom, 1995
United States, 2003 Viet Nam, 2006

— Source:
World Intellectual Property Organization

The resulting “international registration” serves as a means for seeking protection in member countries, each of which apply their own rules and laws to determine whether or not the mark can be protected in their jurisdiction. In other words, your trademark could still possibly be rejected if a member country believes it could conflict with an existing registered trademark there.

More than 80 countries are members of the Madrid Protocol (see right-hand box for a list of some of them).

To obtain an international registration under the Madrid Protocol, a U.S. trademark owner must first file a U.S. application. Then, the owner must file an international application with the World Intellectual Property Organization’s (WIPO) International Bureau.

The fee is paid in U.S. dollars. The Protocol also allows a single renewal date and a single application for renewal.

The International Bureau doesn’t automatically register a trademark once a U.S. application has been made. WIPO must still review the international application to determine whether it meets the Madrid Protocol filing requirements.

How long does an international registration last? It is valid for 10 years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the International Bureau.

The Madrid Protocol enhances the international scope of the trademarks and service marks of American businesses. For more information about the process, contact your attorney.

Another Way to Protect Your Trademark

You can also register your trademark (for a fee) with the U.S. Customs and Board Protection.
This federal agency’s officers will then be able to access your company’s information in its electronic database when screening imports at U.S. ports. The CBP is on the front lines of intellectual property rights enforcement.

However, registration with the CBP should not be viewed as a foolproof method to prevent introduction of infringing products. The CBP has the work force to review only a very small sample of incoming shipments as the agency also focuses on anti-terrorist activities. (Note: Patents cannot be registered with the CBP.)