Registering an International Trademark through the Madrid Protocol (WIPO)

The international trademark through the Madrid Protocol is a centralized and global solution for presiding over and applying for trademarks in more than one country, making it easier than applying for them separately. The International Bureau of the World Intellectual Property Organization (WIPO) runs the Madrid system to make it easy and cheap to register and manage trademarks in different countries.

Importantly, two independent treaties known as the Madrid Agreement and Madrid Protocol make up the Madrid System for the International Registration of Marks, which allows the registration of trademarks in multiple jurisdictions. There are currently 125 countries in the system. 

Types of International Trademark Applications

There are three kinds of international applications under the Madrid system. These are:

• An international application governed exclusively by the Madrid Agreement: This means that all the classifications are made under the Agreement.
• An international application governed exclusively by the Madrid Protocol: This means that all the classifications are made under the Protocol.
• An international application governed by the Madrid Agreement and the Madrid Protocol means that some classifications are made under the Agreement and some under the Protocol.

Who can apply for international Trademark Registration?

Usually, only people or businesses in a country that is a party to the Agreement or the Protocol can file for international trademark registration. So, any private business owner or person can apply for the Madrid system if they do business with a system member. But it’s important to know that You can’t use the Madrid international registration system to protect a trademark outside the Madrid Union.

Hence, to apply for the Madrid system, 

• You must be a resident, entitled to your establishment, or a citizen of one of the countries included in the system. 
• The individual must also have applied for or registered a trademark in the country of origin. For instance, the United States Patent and Trademark Office (USPTO) is the Office of origin for applications originating from the US. 

How much does it cost to register a trademark under the Madrid system?

Before applying, business owners can use the fee calculator available on the WIPO website to estimate the payable fees. If you apply under the Madrid system for your trademarks, you can pay your fees through WIPO in Swiss francs (CHF). For maximum effectiveness and an accurate result, it is advised to use the calculator very close to your sign-up date to account for any fees that may have taken effect. 

The cost includes the 

• basic fee
• a complementary fee for each Contracting Party designated; 
• An individual fee for any Contracting Party, which is designated under the Protocol and has declared that it wishes to receive such a fee. The amounts of the individual fees are determined by the respective Contracting Parties and are published in the WIPO Gazette of International Marks.
• A supplementary fee for each class of goods and services over three. However, no supplementary fee is payable where all the designations are ones in which an individual fee has to be paid.

Everyone outside the US who wants to use the Madrid system in the US has to pay fees to the USPTO and the International Bureau. When the USPTO certifies international applications and sends them to the International Bureau, it charges a “certification fee.” The certification fee is $100 per class if the international application is based on a single US application or registration. If the international application is based on more than one US application or registration, the certification price is $150.00 per class.

Except for some multi-country filing systems, like the European Community Trademark system, which has 15 member countries, US trademark owners who want to protect their marks in other countries must apply for their marks individually. Individually applying for protection is expensive and time-consuming. You must translate the application into the proposed country’s local language and the cost of foreign trademark lawyers. 

How to Apply

You must include the following in all international applications submitted to the WIPO International Bureau through the Office of Origin.

• A reproduction of the mark (which must be identical to that in the essential registration or application).
• A list of the products and services for which protection is requested, categorized using the International Classification of Goods and Services.

Before filing an international application, it is necessary to find out if similar marks subsist in your target market. Once filled with your basic trademark, it will be validated and dispatched to WIPO for examination.

Duration of A Trademark Under the System

The international mark registration under the Madrid Protocol is valid for ten years. After that, you can renew the registration directly with WIPO in the concerned contracting parties. Generally, WIPO sends a renewal reminder letter to the holder and representative of an international registration six months before its expiry. You can then file a request online to renew an international registration three months before expiration until the end of the six-month grace period WIPO gives.