The Madrid Protocol treaty permits holders of U.S. trademark to extend their trademark rights globally into over 80 countries by filing requests through the U.S. Patent and Trademark Office. However, this treaty does not create a global trademark that can be used in every single country in the world.
How does this work?
When a U.S. trademark holder applies for international protection through the Madrid Protocol system, he extends his U.S. rights to WIPO’s (World Intellectual Property Office) global trademark clearing house in Geneva, Switzerland. You then receive an international certificate registration, which is used to extend your U.S. trademark into the other member nations of the Madrid Protocol that you select. Each country has a fee. The Madrid Protocol basically makes it easier and more affordable for a U.S. trademark holder to extend his trademark internationally on a country-by-country basis.
In order to extend your U.S. trademark under the Madrid Protocol, you need to:
- Own a U.S. trademark application or registration;
- Be a U.S. citizen, a U.S. business entity, or have a real and effective presence in the U.S.; and
- Know which specific countries in which they would like protection that are part of the Madrid Protocol.
What you should be aware of?
1. The filing fees are non-refundable, so it is best to first conduct a record search to make sure the trademark is available in the countries you wish to select.
2. For the first 5 years, protection under the Madrid Protocol relies on the continued existence of the U.S. trademark application or registration.
3. Finally, it is possible to receive protection for your trademark in other countries that are not members of the Madrid Protocol. You can file directly in the country’s intellectual property offices you wish to seek protection from.
If it’s time to expand your brand, EPGD Law is here to help. You can reach us at info@epgdlaw.com or call us directly (786) 837-6787.
*Disclaimer: This blog post is not intended to be legal advise. We highly recommend speaking to an attorney if you have any legal concerns. Contacting us through our website does not establish an attorney-client relationship.*
