The Madrid Protocol: International Trademark Law

How to Apply for International Trademark Protection

Clients:
Tupperware
Yale University School of Medicine
Tiffany & Co.
CNOOC Limited
The Boston Consulting Group

The Madrid System for the International Registration of Marks

The Madrid System, or the Madrid Protocol, is a system for obtaining a bundle or package of trademark registrations across multiple jurisdictions through a single filing. Unlike the European Community Trade Mark system, the Madrid System grants applicants a group of registrations rather than a single international trademark registration.

The Marid Protocol is administered by the World Intellectual Property Organization (WIPO) and allows for a trademark owner in one of the member countries to have their mark protected in any of the 97 signatory countries. A trademark owner may file a single application in their own country and designate the other nations in which they would also like to acquire registrations. This allows for a single application in a single language without the need for separate filings. 

The protection afforded by a foreign trademark registration through the Madrid system is the same as if it had been registered by the trademark office in that nation. The Madrid system also makes it considerably easier to manage registrations, as owners can renew and modify their registrations in a single procedure through the International Bureau of WIPO. 

You can find a list of Madrid Protocol members here.

Madrid Protocol Fees

There are, understandably, some additional fees associated with filing through the Madrid system. Included in these fees is a service charge to the receiving office and international fees which vary according to which countries the applicant is filing for. Be aware that all fees are charged in Swiss Francs, and so applicants will be subject to current exchange rates as well. 

The United States Patent and Trademark Office (USPTO) charges a fee of $100 per class for applications based on a single U.S registration, or $150 for applications based on multiple registrations.  The international fees, which must be paid at the same time, vary widely depending on the type of application. Currently, as of December 2015, fees range from $725 for a simple black and white mark in the least expensive country to over $19,000 for a colored design mark filed for all signatory countries. Get an estimate for a more accurate quote on the cost of your intended application.

For more information on WIPO fees, you can see their Schedule of Fees and the Fee Calculator on their website. 

Applicants can use the USPTO electronic filing system to file a Madrid Protocol application. You can pay all WIPO and USPTO fees through the USPTO filing system. For more information on USPTO fees and applications, see how Trademark FAQ and Trademark Costs pages.