International Trademarks – Madrid Protocol System

While it is not possible to register “international trademarks”, the Madrid Protocol system provides the next best solution if the country in which you want to register has signed up to the Madrid Protocol.

The current list of countries within the Madrid System has some notable gaps, such as Canada, South Africa, Hong Kong and many South American and Middle Eastern countries.  So, it is gratifying that more and more countries are signing up every year.

Additional countries that have joined the Madrid System recently, according to WIPO, are the OAPI (African Intellectual Property Organization) countries and Zimbabwe.

The OAPI countries include: Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoro Islands, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.

India and Mexico signed up in 2013 and China in 2012. Cambodia will join in June 2015. It is also rumoured that Canada, one of the notable gaps mentioned above, will soon become party to the Madrid Protocol.

How the Madrid Protocol works in practice 

The first step to securing wider protection globally is to register a trademark in your home country as a starting point.

For UK companies or those operating within the EU, the base application will either be a UK or EU trademark.

Then once that UK or EU application is filed, you may extend your registration by using a single application. In that application you designate your desired countries (which must also be party to the Madrid system).

The overall costs will depend on the applicable official government fees of the countries in which you are applying to register, and the number of classes.

Note that the application must use the same classes as the base application, although it is possible to apply in fewer classes than your base application.

The official fees vary a lot from one country to another. To get an indication of the official fees, use our official fee calculator. The legal fees will depend on the number of countries and classes involved.

Conclusion

With more and more companies doing business online, businesses nowadays have to think about international trademark matters from the word go.

Before the Internet became the main route to market for so many companies, global trademark issues would only have arisen for them once companies were substantial enough to move into other countries.

Nowadays, being online means you do business worldwide, so that it is increasingly important to check the trademark registers in other jurisdictions before making a final selection of a name. This is often overlooked by businesses, even substantial ones, with serious consequences. For example,as mentioned in our previous post SkyDrive Set for a Skydive? Microsoft recently had to rebrand to One Drive,

Once a company has done its due diligence in other markets and settled on a name it needs a clear strategy for registering in other markets. And the Madrid System provides a cost-effective way to obtain multiple registrations worldwide. The cost of applying in 3 classes in 10 countries could come to less than it would to register in 2-3 countries that are not party to the Madrid system.

Have you registered your rights in other countries? What was your experience? Please do share your experience with us by leaving a comment below.