Are you wondering if it is possible to apply for the registration of a trademark in multiple countries at the same time? The answer is yes, thanks to the Madrid Protocol, a treaty signed by several countries in 1989. This protocol allows you to request, modify or renew your trademarks at an international level.
Who is in charge of administering the Madrid Protocol for the registration of trademarks?
The World Industrial Property Organization (WIPO) is in charge of administering the Protocol. WIPO is a specialized agency of the United Nations based in the city of Geneva, Switzerland.
What does the Madrid Protocol for Trademarks Registration consist of?
This Protocol offers trademarks’ owners a system whereby they can file a single application directly with their national or regional trademark office. It offers this service by paying a single set of fees to apply for protection in up to 128 countries. This system is very advantageous as it allows you to expand your business in a very simple way. Please note that the Protocol uses the Nice System to classify trademarks.
Additionally, it is important that you bear in mind that although the system allows you to submit a single application for several countries, each local office will be the one that makes the final decision.
Who can request the registration of a trademark through the Madrid Protocol?
- a national of a State party to the Madrid System;
- a person who is domiciled in the territory of a State of the Madrid System;
- a legal person that has a real and effective commercial or industrial establishment in the territory of a State party to the Madrid System.
Also, you will need to have a “base application”. What does this mean? That whoever requests the protection of their trademark through the Madrid Protocol must have a national or regional registration or application with respect to the same trademark in the intellectual property office of the state where the applicant initiates the process.
Furthermore, the “office of origin” is the office that receives the application for the base mark.
How to submit a trademark application through the Madrid Protocol?
In order to use this system, it is necessary to fill in the corresponding form, list the products and/or services identified with the trademark, designate the countries or regions in which protection is requested, and pay a set of fees. Thus, a single application, in one language, for several countries at the same time, is filed through the local office, simplifying applications.
In which languages can you submit the trademark registration through the Madrid Protocol?
The official languages are Spanish, French and English.
What is the cost of the procedure?
The cost will depend on the number of countries and classes chosen for protection. To know the cost of your trademark registration request, ask us for a quote and we will send it to you as soon as possible.
Conclusion
To conclude, if you want to extend the protection of your trademarks to other countries part of the treaty, you have access to the Protocol by reason of your domicile, establishment or nationality and you have a base trademark: you can use the system offered by this treaty.
Otherwise, you will have to file the applications locally, in each country where you intend to register your trademarks. At Legal Core Group we are prepare to advise you on the best way to protect your trademarks worldwide. Ask us for a quote.
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