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Madrid Protocol

The Madrid System, commonly referred to as the Madrid Protocol, is an international legal process for registering trademarks in many countries around the world. It allows an applicant to have a U.S. attorney file applications throughout the globe without the need of securing or coordinating with legal counsel in each individual country. There are also cost savings with regard to government filing fees.

The system is based on the Madrid Agreement Concerning the International Registration of Marks of 1891 and the Protocol Relating to the Madrid Agreement of 1989. The Madrid system provides a convenient and cost-effective method for U.S. businesses to register and maintain trademark rights within member countries.

If you are considering filing a trademark application in any one of the member countries in the Madrid System, you should consider filing using the Madrid Protocol rather than filing directly in the individual country. We have in-depth experience helping our clients understand their options under the Madrid System and have successfully guided countless clients through the filing process.

Which Regions are Included in the Madrid Protocol?

The Madrid system covers two regions within the European continent. The first, the European Community, includes all member states within the European Union, except Malta. The second, Benelux, includes the Netherlands, Luxembourg and Belgium. The ability to file one application covering the entire EU provides thousands of dollars of cost savings compared to filing in each country individually.

The Advantages and Disadvantages of the Madrid Protocol

Without the Madrid System, individuals and businesses would have to file separate applications with the local trademark office in each country individually. The advantages of the filing under the Madrid System include:

Reduced filing fees
Lower maintenance fees
Avoiding language complications
Expedited, simultaneous registration process
Ability to add additional countries or regions at a later date

One potential disadvantage of the Madrid System is that if the U.S. trademark application that the international applications are based on is cancelled or abandoned, the international application will also be cancelled by the International Bureau. This is known as a “central attack”, and could require the re-filing of the foreign applications.

Effectively Securing International Trademarks

When branching out into international markets, it is vital to file trademark applications in those countries at the earliest opportunity. Failing to do so could lead to squatters that register your trademark in those countries before you. There have been several high profile instances in which a U.S. company was forced to pay a large sum of money to an unscrupulous because the U.S. company waited too long to file internationally.