Madrid Protocol: Obtaining and Maintaining International Trademark Protection

The Madrid Protocol provides a mechanism by which trademark applicants can seek protection in all Madrid Protocol countries (107 contracting parties) through a single registration. However, while there are significant benefits to an International Registration, including cost savings, flexibility, and easier portfolio management, there are disadvantages and risks too.

Such risks include the dependence of an international application on an underlying application filed with or a registration issued by the Office of Origin. If the underlying application or registration is limited or abandoned during the five-year dependency period, the International Registration is canceled with the option to convert the registration to national registrations.

The International Registration is also limited to the goods or services in the application or registration in the Office of Origin. For US applicants, this means the International Registration will be subject to the requirements and limitations on goods and services that the USPTO requires.

Counsel must understand the ins and outs of obtaining, maintaining, transferring, and enforcing registrations through the Madrid system.

Listen as our authoritative panel offers guidance on navigating the Madrid Protocol, including the mechanics of the process, how and where to file, amending an application, and dividing a registration. The panel will examine how to respond to a deficiency notice from WIPO, subsequent designations, differences among countries in handling certain aspects of Madrid designations, and the e-renewal process. The panel will also discuss the limitations or drawbacks of the system.