trademark protection

Madrid Protocol and Trademark Protection in Multiple Countries

Often, clients desire trademark protection in multiple countries.  When deciding how to register the same mark in multiple foreign countries, there are a couple of options: (1) file applications in each country through a trademark attorney located there; and/or (2) file a single application with an election of member countries and/or regions via a treaty called the Madrid Protocol.  Since the first option is straightforward because it consists of merely direct filing of an application in each country of interest, then the focus of this short article is on the second option.

Filing a Madrid Protocol Trademark Application

An applicant may file a Madrid Protocol trademark protection application based on the following: (1) the filing is in the governmental office of the country where the applicant has a domicile; (2) the applicant owns a pending application or registration in the same governmental office as (1); and (3) the applicant elects one or more of the 131 countries, which are members of the Madrid Union as of May 2024.

Domicile Requirement

Regarding the first prong, “domicile” means the applicant, when a real person, is the country where the applicant is a national, has a permanent residence, and intends to return when absent from that residence.  When the applicant is an entity, then “domicile” means the country where the applicant has its principal establishment, which is a real and effective industrial or commercial establishment.  If the applicant’s domicile, whether a real person or entity, is located in a Madrid Protocol country, then the applicant satisfies the domiciliary requirement and may file its Madrid Protocol trademark application solely in that governmental trademark office.  If the applicant does not satisfy the domiciliary requirement for a Madrid Protocol trademark application, then such applicant cannot file a Madrid Protocol trademark application.

Base Application or Registration Requirement

Regarding the second prong, an applicant must own a pending trademark application or trademark registration in the governmental office of the applicant’s domiciliary for the same mark desiring registration through a Madrid Protocol trademark application.  This prior-owned application or registration requirement for the Madrid Protocol applicant is called the “base application” or “base registration” in Madrid Protocol parlance.  If the applicant owns a “base application” or “base registration,” then such applicant may file a Madrid Protocol trademark application in the applicant’s domiciliary governmental trademark office.  Else, the applicant cannot file a Madrid Protocol trademark application.

Election of Member Countries

Finally, under the third prong, the applicant must elect one or more of the 131 countries/regions for an applicant’s Madrid Protocol application.  For example, in addition to the US trademark application/registration being the applicant’s base application, the applicant must elect Madrid Protocol countries or regions, such as Canada, Mexico, India, European Union, etc., where the applicant wants its Madrid Protocol application to be examined for trademark registration of its mark in those countries.  Each of these elected countries’ governmental trademark offices will examine the application to determine whether the mark is registrable in its country/region.  If yes, then the mark will register in such elected country/region without having to hire local counsel, i.e., a nice cost savings for the applicant.  If no, then the examiner in such elected country/region will issue a document with rejection(s), and then the applicant must hire local counsel in that country/region to respond to that document to overcome the rejection(s) to permit registration there.

Potential Downsides of the Madrid Protocol

Despite the potential for the client/applicant to realize simplified maintenance and substantial cost savings through centralized filing of a single Madrid Protocol trademark application, which potentially elects up to 131 countries/regions, there is a downside as compared to option (1), i.e., direct filing of an application in each country.  The Madrid Protocol application depends on the validity of the applicant’s base application for the first five years of its existence.  For example, if a third party files an opposition/cancellation against the applicant’s base application/registration during its first five years of existence, and such third party prevails, then none of the registrations issued through the applicant’s Madrid Protocol’s elected countries remain valid; this is known as a central attack because invalidity of applicant’s base application/registration kills all foreign registrations down the line from the base application/registration.  A possible way to mitigate the potential of this central attack is to wait to file the Madrid Protocol application until an examination of the applicant’s base application suggests its registration will occur.

Making the Decision on Trademark Protection

Whether to exercise option 1 or option 2 in seeking trademark protection in multiple countries for the same mark is a decision that you should discuss with your counsel to understand potential risks as well as benefits, costs, and peculiarities of certain member countries.  If this is something you would like to discuss, then please reach the author at ejo@kmd.law as he will be glad to answer your questions.

Written by Erik Osterrieder, Senior Attorney at KMD Law