International Trademark Protection (Madrid Protocol)
Globalization has changed the scope and requirement of trademark protection. Many early and mid-stage companies looking to expand internationally are starting to look for intellectual property protection advice prior to such expansion, to strategically position themselves in the market. This article addresses considerations of protecting trademarks internationally outside of the United States, such as through the use of Madrid Protocol.
Internationally Registering a Trademark
There is no singular process for internationally registering a trademark in every country around the world. Every individual country is required to approve its own trademark application based on its own review process. Businesses should keep in mind that the same application could be approved in one country but denied in another.
Two Methods of Registration
There are generally two ways to make trademark registration filings internationally, such as in the European Union. A European Trademark covers the registration of a trademark in all member countries of the EU.
- Madrid Protocol;
- Retaining a local counsel in each individual country to complete the filing.
The Madrid Protocol
As compared to retaining a local counsel in each country, international trademark application under the Madrid Protocol is often the more efficient method of seeking protection of the same trademark in multiple countries, such as in the EU. The Madrid Protocol allows a standard application for registration to be completed and submitted to any Protocol member country.
Under the Protocol, U.S. companies can utilize their existing U.S. trademark applications and registrations to obtain trademark protection in any member country. Additionally, foreign companies in other member countries can use the Protocol to obtain protection in the U.S.
It is also beneficial to keep in mind that in addition to the EU member countries, more than 100 countries are active members of the Madrid Protocol, including the China, Japan, Russia, and Canada.
If you or your company would like to protect your trademark internationally, contact us today.
Alternative Approach & Additional Consideration
A disadvantage of filing through the Madrid Protocol is the rule of reliance upon an existing trademark application or registration in the home country. If a trademark application is denied in the home country through which international registration is sought, the application will not be able to proceed through the Madrid Protocol. Instead, the applicant will have to hire local counsel within each individual country where it seeks protection. While this method may seem more complicated, it can be advantageous for those applicants who do not want to be tied to whatever happens to the trademark application in their home country of origin, and instead prefer to have the application reviewed on its own merits independently in each country.