What is the Madrid Protocol?
The Madrid Protocol is an international treaty that allows the owner of a U.S. trademark to seek registration by filing one application called, “international application”, in any of the countries that have joined the Madrid Protocol. It is one of two treaties that are part of the Madrid System for international registration of trademarks. The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland administers the international registration system. The international registration through Madrid Protocol is a way to seek intellectual property protection in its member countries. To determine if the mark should be protected in their respective country, each member country applies its own laws and rules of its jurisdiction. There are currently 90 countries that are members of the Madrid Protocol. The Republic of India is one of the newest members that joined the Madrid Protocol system on April 8th, 2013, providing a safety net for the expansion and global presence of brands of both Indian and U.S. based companies. The treaty will have full force with regard to the Republic of India starting on July 8th, 2013.
What are the benefits of having International Madrid Protocol Registration?
Trademark owners seeking intellectual property protection through the Madrid Protocol may have significant cost savings in terms of foreign associate costs and filing fees. Especially where there are multiple trademarks, the Madrid Protocol provides a simplified, efficient and very economical way for trademark owners to ensure and extend protection of their trademarks in multiple countries by filing simply one application for each trademark through a single office and also paying one set of filing fees in one currency. It avoids having the trademark owner from having to file their application in multiple offices, in different languages and paying different sets of filing fees in different currencies. It further helps the trademark owner from having to hire a local agent to file the application in each country and provides one expiration date for the trademark rather than having to worry about multiple expiration dates. The management of the trademark, once registered, in any member country is also simplified since steps to change any records only need to be through a single procedural step with the World Intellectual Property Organization's International Bureau. If you desire widespread international trademark protection, strong consideration should be given to the Madrid Protocol system where the investment of time and costs can be significantly reduced.
What are some of the limitations associated with having International Madrid Protocol Registration?
The greatest disadvantage of the Madrid Protocol is the possibility of “central attack”. “Central Attack” is the process by which an international registration may be defeated in all countries in which it is protected simultaneously through a single revocation action or invalidation against the basic registration. This can happen if the basic application or registration cancelled, abandoned, refused, withdrawn, invalidated, or lapses within five years from the date of the international registration. If any of these situations were to happen, then all foreign applications and registrations that are based on the international registration would be automatically cancelled as well. The only way to seek subsequent protection in those countries then would be to convert those marks to standard national marks, which may be achieved after quite a lot of effort and expenses. Another important consideration with an international registration under Madrid Protocol is that the owner of the international registration cannot transfer ownership of any dependent marks to an owner that is not resident in a member country. In addition, trademark owners should consider the possibility that their U.S. application will be rejected, either on procedural, substantive grounds, or by the possibility of “central attack” on any registration.
How do I know if an International Madrid Protocol Registration is right for me?
Whether you are an individual entrepreneur with a cutting-edge idea or an internationally growing business, protecting your company's investments and innovations is extremely important as well as growing and maintaining your intellectual property portfolio. The Madrid Protocol creates opportunities for U.S. trademark owners. However, it is not always the best choice for every international trademark filing as the area of intellectual property law is extremely complex and each business’s intellectual property portfolio has its own custom needs. Consequently, consulting with an experienced attorney as to how to protect your ideas and innovations may be the key to achieving business success and protecting your business’ intellectual property in the United States and in the global marketplace.
Disclaimer: This article is not intended to be legal advice. Legal advice depends on each and every person's particular circumstance. This article is for informational purposes only and must not be used for avoiding any penalties that may be imposed under the Internal Revenue Code. Arora Law Firm and Radhika Arora, Esq. specifically disclaim any responsibility for positions taken by readers in their individual cases or for any misunderstanding on the part of readers of this article or publication.
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