The Madrid Protocol is an international system designed to facilitate the registration of international trademarks in countries around the world.
Under this system, you can extend a UK or a Community Trade Mark application or registration to many countries around the world, provided that they are members of the Madrid Protocol. The USA, China, Japan, and Australia are members of the Protocol, as well as all member states of the European Union (except Malta). An international trade mark registration is issued by the World Intellectual Property Organisation (WIPO) in Geneva, and has effect in all the member countries designated by the applicant, subject to the right of national offices to refuse protection in their countries. An international registration is therefore in effect a collection of national registrations. This is likely to be the cheapest way to proceed if you want to protect your trade mark in several non-EU countries. The cost of international trademark registration will depend on the specific countries of interest.
How it works
Applicants for an International Trademark Registration using the Madrid Protocol must have a “basic” application or registration in their home country. For British citizens or UK companies, either a UK or a CTM trade mark application or registration will suffice.
The international trademark is filed with WIPO, via the applicant’s local trade mark office, and must specify the country or countries where protection of the trade mark is sought. The trademark applied for must be the same as the mark applied for or registered in the home country. The goods or services covered by the international application cannot be broader than the goods or services covered by the basic application or registration. WIPO will then notify the Trade Mark Office in each designated country. Each country will have 12 or 18 months (depending on the terms on which they joined the Madrid Protocol) in which to notify WIPO of any reason why it will not, or might not, grant protection. If the Trade Mark Office of the designated state does not inform WIPO within the relevant period of any refusal or possible refusal of protection, the trade mark will be granted protection automatically.
The international trademark registration can be extended to other member-countries at any later time should they become of interest.