My previous blog post, “What are the Types of Trademarks,” explained the distinction between Trademarks, Service Marks, State Marks, Federal Marks, and Common Law Marks, which are common types of protection for marks in the United States. This blog post concentrates on protecting marks outside of the United States, such as by an “International Registration,” commonly known as “Madrid Protocol” applications as an option to expand the protection of national marks internationally through the World Intellectual Property Organization (“WIPO”). This blog post covers three significant types of foreign registrations for marks.”

Non-U.S. Registrations

There are three main ways to register a mark in most other countries:

1. By filing directly in the country’s national Patent and Trademark Office (“PTO”), usually by hiring a local attorney (which many countries require). This is available in all countries that have a PTO.[1]

2. For a few select groups of countries in Africa and Europe that have combined their jurisdictions by treaty to establish a single trademark registration system, a single application can be filed that covers all of those countries. Examples of this are the EUIPO, Benelux,[2] OAPI for 17 French-speaking African countries, and ARIPO for 11 mainly English-speaking African countries.

3. For approximately half of the countries in the world, the International Registration of the Madrid System (“International Registration”) can be used to expand the protection of a national mark in another county or counties pursuant to the Madrid Protocol or Madrid Agreement. An international, nongovernmental organization called the World Intellectual Property Organization (“WIPO”) administers this process.

The first option is self-explanatory and likely the more expensive approach when registering in multiple countries at once. The foreign legal counsel explains what is required to file a new trademark or service mark application in the county of interest and files the application accordingly (assuming foreign counsel is retained).

The second option functions similarly to the first option: the foreign legal counsel explains what is required to file a new trademark or service mark application at the EUIPO, Benelux Office for Intellectual Property, OAPI, or/and ARIPO for a selected group of countries and files the application accordingly (assuming foreign counsel is retained).

The focus here is on the third option using an International Registration to expand your mark internationally.

The Madrid system was originally governed by the Madrid Agreement, from 1891 (“Madrid Agreement”), and more recently, by the Protocol to the Madrid Agreement, from 1989 (“Madrid Protocol”).

The applicant of an International Registration must be a national of, domiciled in, or have an industrial or commercial establishment in one of the countries that are members of the Madrid Agreement or Madrid Protocol (“Contracting Parties”). Here is a list of the Contracting Parties. Various countries in Central America, South America, Africa, and the Middle East are not members of the Madrid Protocol.

The application for an international registration (“international application”) must be based on an application or registration of one of the contracting parties (“base application/registration”) and must designate one or more countries in which an “extension of protection” is sought, which must also be a member of the Madrid Agreement or Protocol. The international application must be for the same mark, by the same applicant as the base application/registration, and must include the same goods/services or a narrower version of the goods/services of the base application/registration.

After submission of the international registration and evaluation by WIPO, WIPO forwards the application to each contracting party designated in the International Registration which will in turn examine and usually publish for opposition the request for extension of protection as a national trademark application under its local laws. The contracting parties’ PTO must examine and refuse the request for extension of protection within 18 months. If the contracting party’s PTO does not notify WIPO within the time period, the mark is automatically registered.

The international registration is dependent on the basic application/registration for 5 years from the registration date of the basic application/registration. Therefore, if the base application/registration is abandoned, canceled, or expired in part or in whole during the 5-year dependency period, then WIPO will cancel the International Registration, in whole or in part, accordingly.

The main advantages of the International Registration are expanding and managing through a single office (WIPO) your international trademark portfolio in a simplified manner, without the need to file a document for that mark in every country separately; it is usually cheaper to file and maintain marks in numerous countries; and the international application can be handled in one of the official languages of WIPO (English, French, and Spanish) without the need to use the language of the countries of interest.

Conclusion

Understanding the type and scope of protection needed for your mark is crucial for an effective national and international brand protection strategy. If you have questions or need assistance with the selection, protection, and international expansion of your mark through WIPO, we suggest you speak with a qualified trademark attorney to guide you on what is best for your mark and business.

[1] Most countries do have a PTO but some countries might just offer a publication system and some countries might rely upon the registration of the mark in their former mother country.

[2] “Benelux” is an abbreviation for Belgium, Netherlands and Luxembourg.

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