How do I obtain international trademark protection?
The Madrid Protocol provides a centralized filing system allowing a trademark application or registration in one country to form the basis for an international trademark registration. Advantages of filing under the Madrid Protocol include potential cost and time savings over filing individual national applications. Most major industrialized countries and regions are members of the Madrid Protocol, and Canada has joined as of 17 June 2019.
Advantages of filing under the Madrid Protocol include the potential cost savings over filing individual national applications. Filing under the Madrid Protocol requires filing a single application in the home country. Applications in foreign countries are filed by designation of the foreign member countries in which protection is also sought in the international application. The application in the home country is prosecuted to registration in the same manner as a regular national application for that country. For the designated foreign member countries, the respective national trademark offices will conduct their own separate examination to determine whether the trademark can be registered in their country.
Another advantage over individual national applications is that administrative matters subsequent to registration (e.g. name change, address change, owner change, renewals, etc.) can usually be processed in a single procedural step, with effect across all designated contracting states. This simplifies the management of trademark portfolios and can result in significant cost savings.
A disadvantage of the Madrid Protocol is that a trademark owner can lose its rights granted by an international registration if the home country application does not mature to registration or if the home country registration is canceled during its first five years. A corresponding loss of rights can be avoided in foreign countries by timely converting the foreign member country designations into individual national applications. Such conversions would, however, negate any cost savings achieved by initially filing under the Madrid Protocol.
Another disadvantage is that the International Registration is based on the home country application. For example, the United States requires more narrow descriptions of goods/service in trademarks than some other countries. As such, you may be able to secure broader protection by filing directly in those countries.
Of course, an international registration can only cover Madrid Protocol member countries. Separate national applications would still be required for non-member countries.
The Madrid Protocol can be a useful tool for trademark protection for companies seeking coverage in a significant number of foreign countries but a careful assessment should be made in each case of the relative benefits and risks of using the system.