Madrid Protocol Filings

The Madrid Protocol provides for a single application process, but multiple examinations, in order to obtain national rights in multiple countries worldwide. Foreign rights are based on initial rights in the U.S. or another country that is a signatory to the Protocol. The Protocol can result in significantly reduced filing fees and maintenance costs, and in many cases can allow an Applicant to avoid prosecution costs altogether.

Trademark holders should be aware, however, that there are some downsides to utilizing the Madrid Protocol, especially for a US-based Applicant, as any subsequent International Registration granted via the Madrid Protocol is dependent upon the US central application/registration for five years.　 If the US mark does not mature to registration or is abandoned less than five years after registration, all Madrid designations will be cancelled unless they are transformed into national applications/registrations. The forfeiture of a US right would then require payment of additional fees in order to “transform” a Madrid designation into a national application/registration.

Another downside of the Madrid Protocol is that the description of goods and services for an application is limited by that of the basic application/registration.　 This requirement can lead to US-based applications obtaining a narrower scope of protection than would be the case if national applications are filed, since a national application can claim additional goods/services. Thus, if a US-based owner’s application covers, for example, goods described as pharmaceutical and biological preparations used in the treatment of spinal cord injuries, any Madrid designation will automatically be limited to this specification, as opposed to the broader “pharmaceutical formulations,” which, could be included in an application filed directly with the European Union’s Trademark Office.

The Madrid Protocol will generally offer some initial savings on filing and prosecution costs, as the cost of initial foreign counsel professional fees will be eliminated.　 However, the risk of losing all Madrid Designations/Registrations upon the abandonment of a basic US application and/or the cost of transforming such designations into national registrations, coupled with the resulting narrow scope of goods/services, due to the stricter US Trademark Rules, suggests that owners of　US intent to use applications may wish to file national applications in their key jurisdictions rather than relying on the Protocol.

Please feel free to contact us for further information and/or cost estimates for the filing of Madrid Protocol applications.