How is the Madrid Protocol useful to protect my mark?

Minneapolis trademark attorney Jennifer Debrow discusses the Madrid Protocol and how it helps protect trademarks.

Contact Jennifer Debrow

Email: [email protected]

Phone: (612) 632-3357

Transcript:

So the typical way of filing trademark applications in foreign countries is what we call national applications. You would use a lawyer in that country to file a trademark application similar to the U.S., and it would go through that country’s trademark office, and you would end up with a French trademark registration, a German trademark registration, a, you know, Ugandan trademark registration. That’s a national application.

There’s a new – well, it’s not that new anymore, but there’s an alternative system called the Madrid Protocol. This is a treaty that about 90 countries have signed onto. More are added all the time, and this treaty allows for an international registration system, so it is via the World Intellectual Property Office, which is a UN special agency in Geneva, Switzerland. The World Intellectual Property Organization; we also call it WIPO. WIPO basically serves as a conduit for applications, so instead of me contacting a lawyer in France to file an application through the French Trademark Office, we can file what’s called an international registration with WIPO and then we can designate certain countries, and when we designate those countries for protection, it’s the equivalent of WIPO basically filing a national application on your behalf. Slightly different wording for everything, but it basically allows us, as U.S. lawyers, to file in a dozen countries without using local counsel, provided that we don’t run into any obstacles in the process, which cuts out a lot of fees on that end, and then the WIPO process is very streamlined, so it’s very cost-effective on the U.S. counsel end.

So if you wanted to file in a dozen countries through national applications, that would typically cost $35,000.00, I would estimate, and if we did it through the Madrid Protocol, it’d probably be about $12,000.00. So there’s a very significant cost savings, and the Madrid Protocol’s really developed for small and medium enterprises to allow them to have global trademark protection at more affordable costs. It does – it’s not perfect for every situation, so it’s important to consider the variables, but it can be a very effective cost-effective way for global trademark protection.