INTERNATIONAL TRADEMARK REGISTRATION
Through the "Madrid Protocol"

Introduction
  • Trademarks are territorial and must be filed in each country where protection is sought. A U.S. trademark does not afford protection in another country.

  • This means that you must apply for a trademark in that other country through that country's trademark office. But that process has been simplified through the use of the "Madrid Protocol" (which is a treaty for the international registration of trademarks). This treaty allows for the protection of trademarks in various countries by filing just one application in a single office and with one set of fees.

  • CLICK HERE For more detailed information click the link below to visit the US government's web page on the Madrid Protocol.

Summary of the Process
  • Register the trademark in your "home" country's trademark agency which in your case would be the U.S. Patent and Trademark Office (USPTO). This registration is known as the "basic mark". You will need to comply with the requirements for a US trademark. You must pay to USPTO the filing fee required by the Madrid Protocol, plus, YOU MUST PAY THE SEPARATE FEES that are charged by each country in which you want protection (meaning that obtaining protection in multiple countries can get pretty expensive depending on how many countries you list in the application)

  • An international application is submitted through USPTO which will certify and then forward it to the World Intellectual Property Organization ("WIPO"). The WIPO conducts a formal examination of the application.

  • Once approved by WIPO, the mark is recorded in the international register and published. WIPO will then send you a certificate of your registration and then notify the trademark offices in the countries that you wish to have your mark protected.

  • Although an International Registration may be issued, each country still needs to determine whether to grant protection of a trademark. A country's trademark office will usually make the decision on whether to grant your trademark within 12 or 18 months. WIPO will then record those decisions with USPTO and then notify you.

  • Once the trademark office in a particular country grants protection, the trademark is protected just as if it has been originally registered in that country. The international registration of the trademark is valid for 10 years. It can be renewed at the end of each 10-year period directly with WIPO.

NOTE: because a foreign country will make the ultimate decision on whether to grant the trademark (even if you use the Madrid Protocol method) it is possible that problems could arise and you may need to retain a trademark lawyer in that country for assistance in resolving those problems.