The Madrid Protocol and International Trademarking - Updated for 2019

Can you file a global trademark that would cover the entire world? Is there such a thing as an international trademark? Have you heard of Madrid Protocol trademarks and would like to know more about what they are and how they work?

In this video, I will answer these questions...

If you found this video useful, subscribe to our YouTube channel. We post new content all the time!

If you have a brand you want to protect, let's get on a quick call to discuss your trademarking strategy.


BOOK A FREE CALL WITH OUR SPECIALISTS


TRANSCRIPT

Canada recently joined the Madrid Protocol System so I’m refuting the video I did three years ago because things have changed significantly for brand owners. Frankly, this is going to be a much more detailed and informative video than the one I posted three years ago so just let’s get right into it...

First of all, no! There is no such thing as a global trademark. Now, you may have clients all over the world, you may be known all over the world, but there is no way to have your brand trademark in all world countries in one go. Well, what about international trademark applications? or what they’re sometimes called Madrid applications? Well, I'm glad you asked. There are two international treaties: the Madrid Agreement and the Madrid Protocol that allow most businesses in the world to file one trademark application and just put checkmarks next to the countries where they want to get their brand trademarked. But even though the process starts with one trademark application, at the end of the day, you're not going to have one international registration. If all goes well, you will have an individual trademark registration in all these countries. But the way this works is that after you file your international trademark application, it will be reviewed separately by the trademarks offices in each of the country's you designated for registration. So for example, if you file your international trademark application and select China, Brazil, Russia, South Korea, and Australia, then your application will be examined by trademarks offices in China, Brazil, Russia, South Korea, and Australia. If for example there are previously applied for or registered similar trademarks let’s say in Russia and South Korea, then they will reject your application, while your application in China, Brazil, and Australia may go through. Having said that, the beauty of following the international application is that there is only one application to file. You don't need to deal with trademarking firms in each country to file your applications, you don't need to translate your trademark application to a million different languages because guess what? not every country recognizes English as an official language. And if you followed direct application that says in Vietnam, it has to be following Vietnamese. But if you find it as part of your Madrid application, then your application can be in English, and it can cover Vietnam if you need to. By the way, you can also file in French or Spanish. It's only up to you. So, three languages: English, French, and Spanish. Now, also, it's a lot easier to pay the official fees because you pay them through one centralized window rather than having to wire funds all over the world.

Speaking of fees, this is how it works...

Believe it or not, these fees are calculated on a per-country basis. There are all sorts of calculators out there that would give you your specific fees. I'm just going to give you a brief overview of how the fees work. There is a basic fee payable for the actual application. It’s either 653 swiss francs or 9 swiss francs, depending on whether the mark needs to be reproduced in color or not. When I'm shooting this video, one 0swiss franc is roughly the same as a US dollar, so that should give you an idea. I don't know why, if you look at the laws and treaties, they come up with these crazy numbers. I guess, they try to justify that there is some thought that went into it and not just some arbitrary number, but why 653? why 903? no idea!

Anyway, let's keep going. So, on top of the basic fee, there is a supplementary fee of a hundred swiss francs for each class of goods and services beyond three classes and there's also a complementary fee so have supplementary and 3complementary for the designation of each country. This complementary fee is either a hundred swiss francs or some other amount as requested by each country. By the way, most countries do request more than 100 Swiss francs. Just for fun, let's look at an international application in four classes based on a basic application filed in the US, let's say we want to designate the following 10 countries: Australia, Canada, China, European Union, India, Israel, Mexico, Philippines, Russia, and South Korea. So let's go to this calculation from top to bottom. So we see the basic fee of 653 it’s because we're not claiming color; we see the complementary fee of 100 francs for Russia, and supplementary fee of a hundred francs for the fourth class; okay looks promising! and then we see the breakdown per country; so I have Australia with 263 francs for the first class and 789 francs for the other three; we have Canada with 251 franks for the first class and 228 franks for the other three; we have China with 249 francs for the first class and 375 francs for the other three; we have EU with 897 francs for the first class and 55 francs for the second class and 328 francs for the other two; we have Israel with 435 francs for the first class and then 981 francs for the other three; we have India with 148 francs for the first class and 444 francs for the other three; we have South Korea with 255 francs for a first class and 765 francs for the other three; we have Mexico with 167 francs with the first class and 501 francs for the other three; we have the Philippines with 116 francs for the first class and 348 francs for the other three.. ahhh! I feel like a freaking News reporter! Alright, so all for a grand total of 8,448 francs just in official fees alone. And just for reference, if you file the same thing in just one class, it would cost you 3,534 francs instead of two classes would cost 5,066 francs.

With the fees out-of-the-way, one other important point to remember is that before you can file an international application where you put those checkmarks next to countries you want to apply, you first need to file a direct application in one of the Madrid Agreement or the Madrid Protocol countries where you have a real and effective industrial or commercial establishment. Now, translating from legalese to humans, this means that your business should be based in one of the 121 countries that are members of the Madrid Union and Madrid Union is basically countries that have joined either the Madrid Agreement or the Madrid Protocol. I'll go over the countries at the moment. For now, here's how this works…

Let's say your business is incorporated in the US and you want to trademark your brand in the US, Canada, France, Sweden, Russia, Australia, Mexico, Brazil, China, and India, you will need to first file a direct trademark application in the US. They call it the basic or national application. And then, you will file be international trademark and check off Canada, Russia, Australia, Mexico, Brazil, China, India and it will be up to you if you want to get direct trademarks in France and Sweden through Madrid or cover the entire EU in one suite. EU is also a member of the Madrid Union so you can treat all countries that are part of the European Union as one entity. So you can again decide on your Madrid application, do you go for individual European countries or whether you just pay one fee and cover all 28. Well, that’s before Brexit happens. As I mentioned, after decades of anti-Madrid lobbying by Canadian law firms who really didn't want to lose out on the legal fees they are making from American companies that wanted to get their brands trademarked in Canada, Canada finally join in the Madrid Union in June of 2019! Yey!!! So now, the Madrid Union covers 121 countries. According to the World Intellectual Property Organization, that represents more than 80% of world trade. So that's pretty good. Chances are most of the countries you're interested in filing in are covered.

But let me go to the list of countries that are not. Before I do that, let me once again explain what it means if the country is not part of the Madrid Union. If a country has not joined the Madrid Agreement or the Madrid Protocol, it means that companies and entrepreneurs who only have a formal business presence in these countries, cannot file international applications. They need to file direct trademark applications in all countries where they want to protect their brands. That's what Canadian businesses had to do until June of 2019. Unless they also had a brand in the US for example. So selling your stuff in other countries was not enough. You actually have to have a formal establishment in that country. Also, when a country is not part of the Madrid Union, it means that you cannot have your international application cover it. Again, to use Canada as an example, until Canada joined the Madrid Protocol, American companies could not list Canada in their international applications. They needed to use local Canadian firms to get that done which is why there was so much resistance by big law firms that are set to lose a lot of billable hours because now, American companies can simply designate Canada in their international application. So to summarize, if your business is based on the countries that I'm going to go over now, you most probably cannot take advantage of filing an international trademark application to protect your brand in other countries. It also means that other businesses need to trademark their brands in your country directly rather than through an international trademark application.

With that said, here's the list of 75 countries that are not part of the Madrid Union as of August 21st 2019: Andorra, Angola, Argentina, Bahamas, Bangladesh, Barbados, Belize, Bolivia, Burundi, Cabo Verde, Chile, Costa Rica, Democratic Republic of the Congo, Djibouti, Dominica, Dominican Republic, Ecuador, El Salvador, Eritrea, Ethiopia, Fiji, Grenada, Guatemala, Guyana, Haiti, Holy See, Honduras, Iraq, Jamaica, Jordan, Kiribati, Kuwait, Lebanon, Libya, Malaysia, Maldives, Malta, Marshall Islands, Mauritius, Micronesia, Myanmar which is formerly Burma, Nauru, Nepal, Nicaragua, Nigeria, Pakistan, Palau, Panama, Papua New Guinea, Paraguay, Peru, Qatar, Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, Saudi Arabia, Seychelles, Solomon Islands, Somalia, South Africa, South Sudan, Sri Lanka, Suriname, Swaziland, Tanzania, Timor-Leste, Tonga, Trinidad and Tobago, Tuvalu, Uganda, United Arab Emirates, Uruguay, Vanuatu, Venezuela and Yemen.

Now, as you can tell, most of these countries are not exactly at the forefront of the developed economies. In all other countries, you're all good. One of the challenges of Madrid applications is that international applications and registrations are dependent on the home application or registration. This means that if the home application or registration is amended, denied, withdrawn, or canceled during the five years following the international registration date, the associated international applications and registration are treated the same way. In other words, if the home application is refused, the international applications will also be reviewed as well. If the home registration is canceled, international registrations will be canceled as well. If the home registration is limited in the scope of goods and services, international applications and registrations will guess what, they'll be limited as well. This is usually referred to as the central attack because that allows interested parties to only go against the home application thereby affecting all other applications as well. This dependency lasts for the first five years after an international registration issue. Once the international registration has been in effect for five years, it becomes independent from the basic registration. At this point, the possible limitation abandonment or cancellation of the basic application or registration no longer has any effect on the international registration. Also, while you file a single application in one of the three official languages, don't forget that the international application is examined by each national trademark office separately. And if they issue objections, you would usually need a local agent to address the possible objections. So what does this all mean, first of all, if you are only interested in filing your trademark in five or less countries, we typically do not recommend going the Madrid application route. The risk simply does not justify possible savings. If it's more than five countries, then it starts making more and more sense with the more countries you want to go for. There are a few other things to keep in mind. It's crucially important to do a comprehensive trademark search in your home country. It's always crucially important but even more so when it comes to an international application. If your direct application is rejected, you simply don't get your own brand in your home country. But if you file an international application based on that flawed direct application, and your international application will also fail. You really don't want to deal with it. You should do at least a minimal search in those other countries to make sure you're not wasting your money filing there. Sometimes, you may want to wait for your home application to clear opposition period to make sure no central attack is started against you. However, when it comes to new brands that you want to trademark on a global level, it may be a problem because if you wait until after the opposition period, you will not be able to take advantage of the conventional priority that will allow you to claim the date of your international applications back to the filing date of your home application. The reason behind it is that in order to take advantage of the conventional priority, you have to follow your international application within a six-month window after filing your basic application. Opposition period usually ends long after the six-month window closes. It's usually not recommended to use European Union as your basic application because there is a higher risk of oppositions there since oppositions and cancellations can be raised by third parties on the basis of prior rights in any of the member countries of the EU. One other consideration to have is that the list of goods and services in the international application may not be broader than the list in the basic application or registration, Because of the current US requirements, US applications often contain more narrow list of goods and services than foreign applications where use is not required. What this means is that US applicants may in certain circumstances prefer the national or regional route to be able to expand the scope of protection of their marks in foreign markets. And really is done on a case-by-case basis. So that is international Madrid trademarks in a nutshell.

bq8WuTDihyk


Get Quora Link

Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.

See our answers to other frequently asked questions about trademarks or leave your comments below!


comments powered by Disqus

Sort by: Most Recent at the Bottom / Most Recent at the Top / Category