The Madrid Protocol – International trade mark applications

The Madrid Protocol more commonly referred to as the Madrid System is an International Trademarking System. It is administered by the World Intellectual Property Organization (WIPO). An application can grant protection in up to 121 countries and is comprised of 105 members with the addition of Brazil in October.

It is a streamlined process of filing a Trademark application. Only a single application is necessary and there is only one set of fees to pay. This makes the Madrid Protocol convenient and cost-efficient. To be able to make an application you need to have an existing Trademark or current national application in one of the member countries.

An Application can be made by anyone who resides within a member state who has an existing national application and the application can be completed in any language. Everything is centrally filed, renewed and maintained making it an efficient process. There are no document formalities required but some jurisdictions do require a statement of use.

The cost of the application is dependent the amount of countries filed in. However, If an application is only going to cover two countries it’ll be a lot faster and around a similar price bracket to do a national application.

Another benefit which saves on cost is that you don’t have to appoint legal representatives for each country.

The time taken for applications also increases dependent on what countries you have made the application in especially in regards to the European Union and the United States where it generally takes longer for an application process.

As well as this your application could also be opposed by anyone and is done on a country by country basis meaning that you could have competition from multiple countries at once. Also, the deadlines for responses can are different from country to country where some are longer and some can be quite short and can be less than two weeks.

Although this is the best way to make an international application for a trademark it has some disadvantages such as the extent of protection in some countries where they prioritise their national trademarks. Also, you can’t alter the description or use of your trademark. You can’t trademark in the countries which aren’t part of the Madrid protocol and if there is a challenge or change to your trademark within your home country you can lose your international protection.

Although it has some pitfalls it is the easiest way to file a trademark internationally across multiple countries.

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