The "Madrid Protocol" is a system coordinated by the World Intellectual Property Organization (WIPO) whereby a trademark owner in one of the signing countries can protect a mark in those countries who have signed the Protocol (98 countries or regional systems as of January 6, 2017, when Brunei Darussalam's accession enters into force). The owner files one Madrid Protocol application, based on a national application to register the mark in the owner's country, and designates those countries in which the application is to be effective. The application is filed in one receiving office in one language, without the need to separately file in each country.
As explained by WIPO, "An international registration produces the same effects as an application for registration of the mark made in each of the countries designated by the applicant. If protection is not refused by the trademark Office of a designated country within a specified period (12 or 18 months), the protection of the mark is the same as if it had been registered by that Office. The Madrid system simplifies greatly also the subsequent management of the mark, since it is possible to record subsequent changes (such as a change in ownership or a change in the name or address of the holder) or to renew the registration through a simple single procedural step with the International Bureau of WIPO. Further countries may be designated subsequently."
The application fees include a service fee to the receiving office and international fees which depend on which countries are selected and other factors. Since they are stated in Swiss Francs, the international fees will change with the exchange rate relative to the "home" currency of the receiving office. For filings in the USPTO, the USPTO service fees are $100 per class, if the application is based on one US application/registration, or $150 per class if the application is based on more than one US application/registration. The international fees must also be paid at the same time. These international fees are, for a single-class application at the exchange rate current on December 10, 2015, in the range of $725 (black and white mark, least expensive country) to $19,750 (color design mark designating all countries). Note that since the international portion of the fees is paid to WIPO in Swiss Francs, the exact cost of a Madrid filing cannot be known in advance due to currency exchange fluctuations.
A schedule of international fees and a fee calculator are available on the WIPO website.
The USPTO electronic filing system handles all of the procedures in accepting a new Madrid Protocol application, linking it to the prior US application/registration, accepting both the USPTO and the WIPO portions of the payments to US dollars, and automatically forwarding the application, certification and payments to WIPO in Geneva.
Brown and Michaels can handle your Madrid Protocol filings in the USPTO, if you or your company is eligible to file in the USPTO. As is true for patent applications under the PCT, in order to file Madrid Protocol filings in the USPTO a trademark owner must be based in the US or have a commercial presence here. If you have any questions on the Madrid Protocol, please contact us.
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