Now that you’ve spent the time and effort (and money) to obtain a trademark or service mark registered with the the United States Patent and Trademark Office, how can you protect your mark outside the U.S. — especially given the fact that virtually all business these days is global?
Prior to 1989, you would have needed to register your mark in each foreign country where you sought protection; a cumbersome and very expensive process. In 1989, however, the Madrid Protocol was adopted. This international treaty provides for a greatly streamlined filing process for those who have obtained a trademark or service mark in a member country to register their marks in the other member countries.
The protocol is a filing treaty and not a substantive harmonization treaty. It provides a cost-effective and efficient way for trademark holders — individuals and businesses — to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. Moreover, no local agent is needed to file the application. While an International Registration may be issued, it remains the right of each country or contracting party designated for protection to determine whether or not protection for a mark may be granted. Once the trademark office in a designated country grants protection, the mark is protected in that country just as if that office had registered it. The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization’s International Bureau. The International Bureau administers the Madrid System and coordinates the transmittal of requests for protection, renewals and other relevant documentation to all members.
The filing fee for a Madrid Protocol application depends on the number and identity of the countries in which you are seeking protection. The WIPO website provides an easy to use fee calculator.