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Making the Most Out of Madrid Protocol Trademark Applications

By: Christopher Heer, Annette Latoszewska | Last updated: May 7, 2021

Once you have decided to pursue trademark protection for your business name, you will need to consider the jurisdictions in which you want to be protected and the best route for obtaining that protection. Three avenues are available for acquiring trademark protection in multiple jurisdictions:

  • Independent national registrations in multiple countries;
  • One or more regional registrations with effect in all member states of that region (for instance, a registration in the European Union Intellectual Property Office with effect across the EU); or
  • Registration under the Madrid Protocol.

The Madrid Protocol refers to a system of international registration of a trademark governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks (“the Agreement”), and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“the Protocol”). Canada only recently acceded to the Protocol, which now has 108 member states covering 124 countries.

The goal of the system is to provide a simple, economical method for registering a mark in multiple jurisdictions and later maintaining the registration. Rather than filing multiple applications, in multiple languages, and paying multiple sets of fees, the Madrid system allows an applicant to submit a single application, in one language, and pay a single set of fees to request registration of their trademark in any number of jurisdictions.

Applicants also generally don’t need to retain local counsel in each jurisdiction designated in their application. Local counsel need only be retained in the event of a refusal received from one or more countries.

Further, a Madrid application is subject to a fixed examination period. Applicants can rest assured that the registration of their mark will be either refused or allowed in under 2 years. With some trademarks offices having backlogs of applications longer than this, this is yet another benefit of filing through the Madrid system. Note, however, that while largely advantageous, the Madrid system is not without its shortcomings, and may not form part of every successful business’ trademark strategy.

Two universally applicable disadvantages of the Madrid system are worth considering. The first is a potential occurrence called a “Central Attack”. An international registration under the Madrid system is dependent for the first five years on an application or registration in the applicant’s home country.

A consequence of that dependence is that the rejection of an application in the applicant’s home country, or a successfully challenged registration, will result in the international registration being invalid for all designated countries. A competitor then, can seriously impede your trademark protection worldwide if they successfully defeat your home application/registration in that five-year period.

A mechanism for saving the individual territorial registrations exists, however, this conversion of the international registration into independent national registrations not only eliminates the advantages of the Madrid system, but also involves considerable expense and represents a significant administrative burden.

The second disadvantage is that an international registration cannot be transferred to a business in a territory that is not a contracting party to the Madrid Protocol. A Canadian business then, could not sell and formally transfer a trademark registration to another business in Guatemala, for instance.

Additional disadvantages are worth noting in respect of applications designating the U.S. For one, the U.S. trademark system includes two federal trademark registers: the principal register and the supplemental register. Marks not eligible for the principal register may nonetheless be included in the supplemental register, which, although not offering the same degree of protection as the principal register, would serve to block applications for confusingly similar marks and also enables the owner of the mark to use the ® symbol in association therewith.

Marks the registration of which is requested in the U.S. via the Madrid Protocol have only one shot: the principal register. If the mark is ineligible for the principal register, a separate national application would need to be filed and prosecuted in the U.S. if an applicant hopes to have their mark included in the supplemental register.

A second U.S.-specific disadvantage is a number of restrictions on changes to applications relating to Nice classes and the goods and services therein. Many changes to an application which would be permissive were the application regularly filed in the U.S. directly are not allowable under the Madrid system. For example, misclassifying goods and services would normally be remedied by reclassifying the goods and services. This may involve adding or changing a class.

These changes would be permissible in a U.S. national application, but are not allowed in respect of a Madrid application designating the U.S. As a result, applicants having misclassified goods and/or services may only remove these misclassified goods/services to advance their application. If they hope to protect their trademark in association with these good or services, they have to file a separate national application.

Deciding How to Execute International Protection of Your Trademark

In determining whether the Madrid system is the appropriate avenue for international protection of your mark, consider:

  1. The strength of your application/registration in Canada;
  2. The trajectory of your business;
  3. The number of states in which you wish to register your trademark; and
  4. Whether your use of the mark is consistent across all states.

If you already have a trademark registration in Canada, a “Central Attack” on your mark may be less of a concern and may not be a reason to avoid capitalizing on the advantages of the Madrid system. If, however, the basis of your international application would be a pending application in your home country, and you anticipate challenges in the prosecution of that application, you may not want all of your protection worldwide to depend on its success.

Another consideration is the direction in which you hope to take your business in the future. If you’re building a business to sell it, you will want to consider whether that sale is likely to involve a state not party to the Madrid Protocol. If so, you may want to avoid using the Madrid system to ensure that you’re able to transfer your trademark registration in the course of such a sale.

Further, consider whether the advantages of the system outweigh the potential disadvantages in light of the number of jurisdictions in which you would be seeking protection. The Madrid system becomes increasingly valuable in terms of economy and efficiency the greater the number of designated states in which protection is sought. If you only designate three states, your advantage in using the Madrid system is less significant.

Finally, note that a Madrid application cannot be amended to reflect differences in the use of a mark from one country to another. If your use of the mark varies between jurisdictions, you may want to consider filing one or more national applications so that your registrations more closely reflect your use of the mark. This is especially relevant in countries which may require you to prove use of the mark as contemplated by your registration.

If, after considering all of the above, you decide to execute your international trademark protection through the Madrid system, and you don’t already have an application or registration for the mark in your home country, that application will be your first step.

As mentioned, an international registration depends on a national application or registration for the first five years of its life. A national application or registration is therefore necessary before filing for international protection using the Madrid system. Your national application should be in the country in which you, the applicant, have a real and effective industrial or commercial establishment, are domiciled, or are a national.

Once you have a national basis for your international application, you may apply for international protection through the Madrid system. Your application will need to include:

  1. A reproduction of the mark;
  2. A list of designated states in which you are seeking protection;
  3. A list of goods and services with which the mark will be used; and
  4. The payment of fees associated with your application.

Deciding on Designated States

One advantage of the Madrid system is the ease with which your trademark protection can be extended to additional jurisdictions. The owner of an international registration may, at any time, subsequently designate additional states.

This capacity to extend your protection later on is a valuable cost-saving feature of the Madrid system and gives you the time to consider your intellectual property needs and strategy if you are unsure about a designation.

When choosing your designations, you may want to keep in mind that the filing fees associated with each designation may only represent a fraction of the ultimate cost of registration in that country. Remember that these are filing fees only and you may need to incur additional fees if your application is objected to or opposed in any of these countries. You may also want to consider the unique requirements of each of the parties you are designating (for example, declarations of intent to use a mark) which can add costs and administrative burden to the process.

Deciding on Goods and Services

A more consequential decision point in your international application is the designation of goods and services. There are a couple of reasons for this. For one, you will not be able to add any additional goods and services within the same application later on. If you want to extend your protection in this way, you will need to file another application and pay additional filing fees.

Second, some designated states will, at some point, require proof that you are using the trademark in association with those goods and services. An excellent tool for assessing the various requirements and peculiarities of the contracting parties is the Madrid Member Profiles page.

From Application to International Protection

Once complete, your application will be examined by the International Bureau for compliance with formal requirements. If the application is in order, the mark will be recorded in the International Register, published in the WIPO Gazette of International Marks, and you’ll receive a certificate of registration. At the same time, the intellectual property offices in the states you designated in your application will be notified.

At this stage, the examination of your application becomes the domain of each individual contracting party designated. Each designated state has 12 (or, in some cases, 18) months to notify the International Bureau that it is refusing your registration.

A refusal at this stage would represent a determination that your application doesn’t comply with the national trademark laws in that state. If no refusal is made in the prescribed time, your mark is protected in a designated state in the same way it would have been if it were the subject of an independent national registration.

To ensure you are maximizing your international brand protection, and for help navigating the various decision points along the road to securing that protection, contact us today to speak with one of our trademark professionals. We can help you develop and execute an international trademark strategy catered to your business and goals.