Seek Global Trademark Protection Under the Madrid Protocol

William H. ShawnCo-Managing Partner, ShawnCoulson

An international treaty called the Madrid Protocol makes it much easier for Americans to obtain international protection for their trademarks. It allows a trademark owner to seek registration in any of the participating countries by filing a single application, called an “international application.” The International Bureau of the World Intellectual Property Organization, which is located in Geneva, Switzerland, administers the system.

The resulting “international registration” serves as a means for seeking protection in member countries, each of which apply their own rules and laws to determine whether or not the mark can be protected in their jurisdiction. In other words, your trademark could still possibly be rejected if a member country believes it could conflict with an existing registered trademark there.

More than 80 countries are members of the Madrid Protocol (see right-hand box for a list of some of them).

To obtain an international registration under the Madrid Protocol, a U.S. trademark owner must first file a U.S. application. Then, the owner must file an international application with the World Intellectual Property Organization’s (WIPO) International Bureau.

The fee is paid in U.S. dollars. The Protocol also allows a single renewal date and a single application for renewal.

The International Bureau doesn’t automatically register a trademark once a U.S. application has been made. WIPO must still review the international application to determine whether it meets the Madrid Protocol filing requirements.

How long does an international registration last? It is valid for 10 years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the International Bureau.

The Madrid Protocol enhances the international scope of the trademarks and service marks of American businesses. For more information about the process, contact your attorney.

Another Way to Protect Your Trademark

You can also register your trademark (for a fee) with the U.S. Customs and Board Protection.
This federal agency’s officers will then be able to access your company’s information in its electronic database when screening imports at U.S. ports. The CBP is on the front lines of intellectual property rights enforcement.

However, registration with the CBP should not be viewed as a foolproof method to prevent introduction of infringing products. The CBP has the work force to review only a very small sample of incoming shipments as the agency also focuses on anti-terrorist activities. (Note: Patents cannot be registered with the CBP.)