If you think you will be doing business in foreign countries, the Madrid Protocol is something you should be aware of. The Madrid Protocol is an international treaty that allows a trademark owner to seek registration in any of the countries or intergovernmental organizations that have joined the Madrid Protocol by submitting a single application, called an international application. The international registration system is administered by the International Bureau (“IB”) of the World Intellectual Property Organization (“WIPO”), in Geneva, Switzerland. Currently, there are 100 contracting countries to the Madrid Protocol.
To apply for a Madrid Protocol application, the original application or “parent application” is filed with the United States Patent and Trademark Office. The USPTO then sends the application to the IB. The USPTO and the IB will separately examine the application. The IB will also send the application to the countries identified in the application. Each country will separately examine the application as well.
The benefit of a Madrid Application is cost savings and the ability to designate new countries in the future if necessary. It can be based on an application for the principal or supplemental register. However, if the parent application or resulting registration is abandoned or cancelled, then the international registration issued by the IB will be cancelled as well.
If the parent application is cancelled before the foreign applications mature into registrations, then the Madrid applicant has the option of converting the foreign Madrid applications into national applications. The conversion is not free, and requires paying the difference between the Madrid application and the cost to file direct in a particular foreign country.
As searchers, it is important to know if your client has aspirations to do business in any foreign countries. If they do, it may alter their risk tolerance when it comes to the trademark search. A thorough search is going to be required to ensure that the parent application is on solid footing from a likelihood fo confusion perspective.