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International Trademarks: The Madrid System [2009-04-15]

Cheryl A. Zeman

If you thought that international trademark registration costs tens of thousands of dollars, you are in for a pleasant surprise, especially if your target markets are in countries that are parties to the Madrid Protocol. In effect since 2004, the Madrid Protocol effected important simplifications to the Madrid system for the international registration of trademarks, which has been in existence for more than 110 years, and is based on the Madrid Agreement.

The current Madrid system permits the owner of a registration in a member state or the applicant for registration in a member state to file for one single international registration, based upon the application or registration in the base country. The World Intellectual Property Organization (WIPO) administers the international registration process. For example, after filing an application with the U.S. Patent and Trademark Office, an applicant may proceed to file an international application with WIPO, based on the U.S. application. The international applicant lists the member countries in which the registration will be effective. An international registration is equivalent to a bundle of national registrations. Each country charges its own fees, in addition to the basic fee charged by the World Intellectual Property Organization. As an example, the filing fees for an international registration in the EU total about $3,000.

Most major trading jurisdictions have now joined the Madrid system, including the United States in 2003 and the European Union in 2004. Due to cost savings, in most cases registering with the EU is preferable to filing registrations with the individual EU member countries, which are also members of the Madrid system. However, if an obstacle to registration exists in one EU member (e.g. an already-existing similar mark), then it may be preferable to register in individual European countries. Notably, China, Vietnam and the Russian Federation are also members.

As markets become increasingly international, and the internet allows even small businesses to go international, the Madrid system of trademark registration is available as an important and cost-effective tool to protect your valuable trademark abroad.

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