Without question, there are famous brands and trademarks that are global in their reach. The examples are nearly endless. Soft drinks like Coca-Cola and Pepsi, luxury brands like Tiffany and Gucci, restaurants like McDonald’s and Starbucks, and many more. When we speak of “brands,” we are, of course, speaking in terms of trademarks.

Despite the global reach of so many companies, their products/services and their trademarks, there is still no thing called an “international trademark.” Trademarks must be registered in each and every country where legal protection is needed for the trademark.

That being said, there are several international treaties that facilitate the filing of trademarks in various countries. One of the most important is called “The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks” (the “Madrid Protocols”). The Madrid Protocols are administered and managed by the World Intellectual Property Organization (“WIPO”), which is well-run, well-known, and well-funded. As noted, the Madrid Protocols are an international treaty that currently covers 131 countries. According to WIPO, these countries represent more than 80% of world trade.

The basic and simple idea behind the Madrid Protocols is that trademark owners should be required to file only one trademark application for all of the countries in which they might want trademark registration and legal protection. That is precisely what the Madrid System was designed to accomplish. Trademark owners can file a single international application with WIPO and indicate the countries in which they seek trademark registration. Essentially, once filed, WIPO makes copies of the international application and forwards it to the relevant trademarking offices in the countries indicated. Note that WIPO is NOT providing any sort of registration itself or adjudication of eligibility. THAT determination is made by the trademarking office in each country where registration is sought.

What WIPO provides is a centralized administration of application filings, including a single set of fees and a set of standardized forms and filing requirements. Other key features of the Madrid System:

• “Builds” from an already existing national registration — what WIPO accepts and processes is generally known as an “international” application, which is based on an already existing national trademark registration (generally referred to as the “basic registration”)
• Pre-review for compliance with formal requirements — WIPO also reviews any application received for compliance with formal requirements such as completeness, number of copies, translations, etc.
• Centralized clearing house for post-registration administration — WIPO serves as a general clearing house for information about applicants; for example, changes in ownership or address for a trademark owner can be recorded through a single procedure at WIPO that the Madrid Protocol members will recognize

From the foregoing, it can be seen why using the mechanisms of the Madrid Protocols may be a good option if you are considering “going global” with your products and services. Once your business has a registered trademark here in the U.S. (or elsewhere), use of the Madrid Protocols is available. Of course, if your business is only seeking to expand into markets of one or two foreign countries, it may be more efficient to file directly with the trademarking offices of those one or two countries. Before deciding which is the best option, it can be helpful to have the advice and counsel of experienced international trademark attorneys.

Contact the International Trademark Attorneys at Revision Legal

For more information, contact the experienced International Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.