Pros and Cons of an International Trademark Registration through Madrid Protocol and Agreement

The Madrid Agreement Concerning the International Registration of Marks and the relating Protocol offer an easy to access way to file multiple trademark applications in a good number of countries worldwide, including the USA and China.

The International Registration will be filed with the International Bureau of the World Intellectual Property Organization (WIPO) at Geneva, Switzerland, and may be designated to all countries party to the Agreement, the Protocol or both.

Filing and Registering of an International Registration

At present, the following countries are members of the Madrid Union:

Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia-Herzegovina, Botswana, Bulgaria, Cambodia, China, Colombia, Croatia, Cuba, Curaçao, Cyprus, Czech Republic, Democratic People´s Republic of Korea, Denmark (including Greenland and the Faroe Islands), Egypt, Estonia, European Union, Finland, France (including all Overseas Departments and Territories), Gambia, Georgia, Germany, Ghana, Greece, Hungary, Iceland, India, Iran (Islamic Republic), Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyztan, Lao People´s Democratic Republik, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Mexico, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands (including Bonaire, Sint Eustatius and Saba), New Zealand (to the exclusion of Tokelau), Norway, Oman, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Rwanda, San Marino, Sao Tome and Principe, Serbia, Sierra Leone, Singapor, Sint Maarten, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, The former Yugoslav Republic of Macedonia, Tunisia, Turkey, Turkmenistan, Ukraine, United Kingdom (including the Isle of Man), United States of America, Uzbekistan, Viet Nam, Zambia, Zimbabwe.

Here is a complete list of the member countries for the Madrid - System.

To be able to file an International Registration with WIPO, applicant has to be owner of a national trademark or trademark application in one of the member states of the Madrid Union. This trademark is called basic registration or, as the case may be, basic application. The International Registration has to be identical with the basic application / registration and may not offer a broader scope of protection.

Furthermore, applicant has to be either a national of or domiciled in the country of the basic application / registration or has to have a real and effective industrial or commercial establishment in said country.

Filing the International Registration with WIPO, applicant will have to indicate the member states of the Madrid Union to which the International Registration shall be designated. Applicant may subsequently designate other member states in the future.

Costs of an International Registration will mainly depend on the number of designated countries and the countries themselves, as some countries have chosen to request payment of individual fees which are significantly higher than the original fees.

Once the International Bureau has completed its formal examination of the application, it will forward the same to the trademark offices of the designated countries for further examination. Any such further examination, opposition proceedings etc. will be handled by the office of the designated member state. Once the application is completed, said office will inform the International Bureau about the grant of protection and the International Bureau will then publish this information.

The Pros and Cons of an International Registration

Whereas equal protection can also be reached by registering national trademarks in the respective countries, it is in particular the internationally operating trademark applicant who may benefit from the International Registration´s advantages:

• the International Registration offers trademark protection in a large - and permanently increasing - number of countries worldwide, including some of the most prospering economies like USA, China and Germany;
• the International Registration will be handled by the International Bureau - thus, there is only one office to collect fees, renewal fees etc. In addition, there is only one renewal date to be obeyed, no matter when the International Registration has been designated to the member states it covers;
• as the EU as a supranational organization signed the Protocol, International Registrations may be designated to the EU, gaining the same protection in the EU member states as the European Union Trademark;
• national trademark offices in the designated countries will only have a maximum of 18 months to issue a notice of refusal. Once this deadline expired, the International Registration will be deemed to have been granted protection in the respective country. Thus, lengthy proceedings with slowly working offices can be avoided;
• especially in cases where applicant´s intention is to obtain trademark protection in various countries, filing an International Registration is cheaper than applying for national trademarks in the those countries;
• International Registrations designated to the USA will be allowed a 5-years period to start to be used in the USA. Thus, it is possible to avoid the strict use requirements for national US-trademark applications.

Nevertheless, the filing of an International Registration should be considered carefully, as there are some negative points, as well:

• within a 5-years period, the International Registration remains dependent on its basic registration / application to the result that any changes or amendments made with respect to said basic registration will directly affect the International Registration. In the worst case, the basic registration will cease to exist - and so will the International Registration. Although at least in cases where the Protocol prevails, applicant will have the chance to convert the International Registration into national registrations which will then be granted the same priority date, such conversion tends to be pretty expensive, as applicant will have to pay all national filing fees without the fees of the International Registration to be refunded;
• for the above reason, using a European Union Trademark as basic registration is especially risky, given that the EUTM may be attacked not only by the holders of prior EUTMs, but also by the holders of prior national trademarks in each of the member states of the EU:
• there are restrictions regarding the assignment of an International Registration as the transferee must have a business, be domiciled in a Contracting Party or be a national of a Contracting Party in order to be entitled to own the International Registration totally or in part;
• most refusals issued by the offices of the designated countries refer to the list of goods and services of the International Registration, claiming that one or more of its terms are not acceptable in the respective legislation. The fact, that any reply to such refusal must be filed through a representative in the respective country, will lead to additional costs in any such case;
• as pointed out above, designating an International Registration to the USA provides some advantages with regard to use requirements - however, it has to be taken into account that there are several disadvantages as well. For example: whereas in cases, where USPTO´s examiners decide that one or more of the goods or services of a national application have to be transferred into a Nice class not yet covered by the application, such transfer may easily be executed (once the additional fee has been paid), the same is not possible with regard to an international registration designated to the USA. Therefore, the pros and cons of an International Registration have to discussed with utmost care, whenever applicant intends to obtain trademark rights in the USA.