By Suzan Hixon and Bethany Gaal Patty
Many of us already know from experience that registering a trademark in the United States is certainly NOT an overnight process. And ~ when you’re waiting to get that trademark registered so you can enroll in Amazon’s Brand Registry 2.0 program ~ the process can feel like a long drawn out slog.
However, if your brand plans on entering (or has already entered) the global marketplace, I just might be able to help you get to registration that much faster. I’ve had marks registered in the European Union before they were even picked up for examination by the USPTO! (Keep in mind these applications were filed directly in the EU, so a big shout out to our super-efficient European brethren!)
Even if Brand Registry 2.0 didn’t exist, it’s still wise to consider obtaining trademark protection in the foreign countries where you plan to export your products. (If you don’t know already, I really harp on my clients to focus on building a brand, and to be really cautious about building only an “Amazon business.” Focusing on the latter can be detrimental to your long-term businesses goals. I know it’s cliché but, it’s Amazon’s playground, and we just get to play on it…. But I digress….)
Unfortunately, foreign filing can be time-consuming, cost-prohibitive, and just downright scary for most of us. Plus, you might be telling yourself… international trademark protection is only for the big dogs, and I’m just…well….
Well, just stop.
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, which is basically just a fancy mouthful for the “Madrid Protocol” filing, is an international treaty that allows trademark owners to obtain registrations in up to 116 countries that have signed on to the treaty (boo you, Canada!) by filing a single international application and paying a single set of fees.
The Process
You must first file an application to obtain registration in your home country (known as “Basic Application” and ultimately “Basic Registration”).
Once you file a basic application for your mark, you file an international application with your home office (e.g., the USPTO), who certifies and sends it to the International Bureau of the WIPO in Geneva, Switzerland.
The International Bureau conducts an examination of your application and, if it approves it, issues your mark international registration. Your mark is then published in the WIPO Gazette of International Marks and the Bureau notifies the countries you indicated (or “designated”) on your application.
The respective intellectual property offices of each country will then conduct their own substantive examination of your international application.
Each office will then issue a refusal or an approval within their statutory time limits (usually 12 or 18 months). Note that one office’s decision has no bearing on the decision of any other country regarding registerability of your mark.
Benefits of filing under the Madrid Protocol
A significantly streamlined process. Rather than filing a separate trademark application in each country in which you desire protection, you file a single application with your home country, in your language, paying your currency. This negates the need for hiring foreign attorneys/representatives or translators.
Broader scope of protection. The Madrid System makes it much easier to achieve semi-global protection for your mark. As mentioned above, 116 countries have already signed on to the Madrid Protocol; and according to the World International Property Organization (WIPO), these 116 countries make up about 80% of all world trade.
Additionally, Amazon’s Brand Registry 2.0 currently accepts registered trademarks that have been issued by the U.S., Brazil, Canada, Mexico, India, Australia Japan, France, Germany, Italy, Spain, the U.K., and the EU.
Cost-effective. You pay one set of fees at the time of filing. The amount paid depends on how many countries you seek registration in, how many classes you include, and the timeliness in which you pay your fees.
Organized and simplified. You can access all of your registrations through a central database in your own language.
Caveats
There is no “internationally effective” trademark. Your international registration simply provides a means for obtaining registration in individual territories. It is up to the discretion of each country’s IP office whether to offer protection.
Your international registration is dependent upon the status of your basic (home) registration for five years. If for some reason your mark is opposed and (*gulp*) cancelled in the country of origin, this effectively cancels your international registration as well. This is known as a “Central Attack” and causes loss of protection in all countries granted by the Madrid Protocol.
Classes and filing bases cannot be added. This prevents mark owners both from adding goods to their application and from alleging dates of first use.
Though there are some notable (though minimal) drawbacks to filing under the Madrid Protocol, the benefits staggeringly outweigh filing in each foreign jurisdiction independently.
Prominent companies such as Daimler, Sony, Nestle, and Microsoft have all taken advantage of the Madrid Protocol. Take it from Owen Malone of Treasury Wine Estates–the Madrid system is the way of the future: “[I]t’s aligned with where the world is going in terms of business and innovation.”
Interested in filing internationally? Feel free to reach out! We’re here to help!