The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, or Madrid Protocol, entered into force in the United States in November 2003. Trademark owners can use the Madrid Protocol to protect their trademarks in foreign countries. The global reach of the Protocol continually expands and, as of March 2021, there are 108 members covering 124 countries. The International Bureau of the World Intellectual Property Organization (WIPO) administers the Madrid Protocol.
The Madrid Protocol is a filing or procedural treaty, not a substantive harmonization treaty. It was designed to provide a cost-effective, efficient, and centralized way for trademark owners—individuals and businesses—to obtain protection for their marks in multiple countries by filing one international application with the applicant’s office of origin, in one language, with one set of fees, in one currency. The office of origin for U.S. nationals is, in most cases, the U.S. Patent and Trademark Office (USPTO).
To use the Madrid Protocol, a U.S. trademark owner must already have a national trademark application filed with (called a basic application) or national trademark registration issued by (called a basic registration) the USPTO. The basic application or basic registration serves as a basis for filing an international application and obtaining an international registration from WIPO. The international registration then serves as a basis for requesting extension of protection in one or more Protocol member countries the trademark owner designates in the international application.
It is important to note that the issuance of an international registration by WIPO does not mean the trademark is registered in the designated countries. Protection is still subject to the trademark office in each designated country examining the application according to their national trademark laws. Each designated country independently may grant or deny registration.
An international application for international registration has the same effect as a national application for trademark registration filed directly in each of the designated countries. Once the trademark office of a designated country grants protection, the trademark is protected just as if that office had directly received a national application from the owner and registered it.
A trademark owner may seek protection in additional Madrid Protocol member countries. This is done by filing an application for subsequent designation but only after the international application has been filed and international registration issued by WIPO.
The Madrid Protocol also provides for the management of trademark registrations, such as recording changes in ownership or in the names or addresses of owners, and renewing international registrations, which are valid for 10 years and renewed for 10-year periods. The international registration owner may file a single request with WIPO and make a single payment. WIPO in turn transmits that information to the designated countries.
The international registration issued by WIPO and all the protections in the designated countries are dependent on the national basic application or basic registration. Thus, if the basic application is terminated or if the basic registration is cancelled within the first five years after the date of international registration, the international registration and all the extensions of protection in the designated countries are also cancelled. In most cases, for a U.S. trademark owner, the basic application is the national application filed with the USPTO or the basic registration is the national registration issued by the USPTO. If the basic application or basic registration fails within the five-year period, the Madrid Protocol allows the owner to transform the extension of protection into a new national trademark application in each designated country. Each new national application keeps the priority date of the original international registration.