Madrid Isn't Just a City in Spain

Madrid is famous for many things including the fact that it is the capital of Spain, the seat of the Spanish monarchy, and can trace its history back to the Roman Empire. It also has some gorgeous architecture, as seen in the Royal Palace below.


In the world of intellectual property, however, it is well known because, in 1989, it happened to play host to the signing of an international treaty between a wide variety of countries that produced what is known simply as the Madrid Protocol. The Protocol is a system that allows a trademark owner in a country that is a signatory to seek protection for that trademark in any other country that is also a signatory to the agreement. The processing of applications filed through this agreement is handled by the World Intellectual Property Organization (or "WIPO") in Geneva, Switzerland.

The main goal of the Protocol was to streamline the process whereby a trademark owner could obtain protection for his or her mark in foreign countries - all without having to hire counsel in each country and file a separate application. The potential cost savings alone on this basis is enormous.

The process is fairly simple: the trademark owner must have either an application pending to register their mark or a valid registration with their home intellectual property authority to be able to file anything under Madrid. The owner then files an application for an international registration of that mark with their home authority - so for example, in the United States, it would be with the US Patent & Trademark Office - which then sends the application to WIPO in Geneva.

If the application is approved by WIPO, it will issue an international registration that is valid for a period of 10 years. The owner can seek subsequent designations of protection for that registration in any country that is a party to the Protocol. As of November 2007, an amazing 74 countries have signed on to the Protocol, representing all corners of the world from Albania to Zambia.

Unfortunately, the United States was fairly late getting to the Madrid table - it wasn't until 2003 that the Protocol took effect here. In the five years since it has taken effect, however, the PTO has worked out most of the kinks in the system. All Madrid applications can now be filed electronically and - perhaps even more importantly - all fees are paid in U.S. dollars (although the official currency of WIPO is the Euro; any fees are automatically converted when you make the payment). The PTO does charge an additional fee for processing the applications at its office since it must review them to ensure that the minimum requirements have been met. The rest of the fees are set by WIPO and vary depending upon which countries you want to apply in.

Despite the amazing convenience and simplicity of the system, there are still some pitfalls. For example, even though you have obtained an international registration from WIPO, that does not guarantee that you will get the registration in the other country. This is because the other countries will still evaluate the application under the same standards that they apply to every application that is filed. It is very possible that you will get a notice from WIPO indicating that the office of the country has refused your application based upon their particular rules or laws. In that case, you have no real alternative but to hire counsel to get things straightened out. Since avoiding hiring expensive outside counsel was a major draw of the Protocol, this can be disappointing to say the least. Still, when the process works and there are no objections from the home country in which you are trying to register your mark, it is a relatively inexpensive and convenient alternative.

The Protocol is particularly suited to those mark owners who wish to obtain protection in numerous countries since, in the long run, the initial cost of obtaining the international registration and then subsequent designations in other countries is spread out over that many more registrations. It may not make as much economical sense if the mark owner wishes only to seek protection in one or two countries. However, the international registration upon which all other applications is based is valid for a period of ten years - should market forces change and the mark owner decides to begin to expand into other countries, that international registration can form the basis of numerous subsequent designations at any point during that ten-year period.

Ultimately, the decision as to whether to seek an international registration under the Protocol is best made in consultation with your intellectual property counsel. There are different factors at work and they will best be able to advise a mark owner of the potential benefits and drawbacks for that owner's situation. But, the Protocol is certainly worth a good look.

image: cuellar
All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.