International Trademarks: How to Protect Your Brand Globally

Many clients want to know how to protect a trademark internationally. The reality is that there is no such thing as a single international trademark. As with patents, trademarks are also jurisdictional, meaning that they only cover the country in which they are filed. So your US trademark application will only bestow trademark rights in the United States and not beyond. In order to protect your brand abroad, you must file in each target country, or alternatively use the Madrid Protocol for a streamlined process.

Foreign Trademark Filing Strategy

Therefore, in order to protect your trademarked word or design in Japan, or Germany, or whatever country you’re concerned about, you will need to file a trademark application in each of those countries. This obviously can get costly very quickly. However, there is an option to streamline the filings and potentially to reduce costs by filing a Madrid Protocol Application.

Madrid Protocol Application

As of 2003, the United States has been a member of the Madrid Protocol. This is an international treaty that streamlined the foreign filing process by allowing an applicant to file one application designating as many foreign member countries as they wish. Prior to the Madrid Protocol, one had to hire local counsel in each and every country and file each application separately. Now, this filing can be done by a US attorney without the hassle of hiring local counsel in each country. In other words, you can retain your US attorney to file a Madrid Protocol application designating as many countries as you wish. Typically, if the EU is designated (which is approximately 29 countries) and other countries, the cost per country is relatively low and cost-effective compared to separately retaining local counsel in each and every country. There are currently over one hundred and thirty countries that are members of the Madrid Protocol, which can be viewed here. However, there are a few requirements in order to qualify, as discussed below.

Madrid Protocol Process (for U.S. applicants):

1. File a U.S. trademark application or obtain a registration (your “basic application/registration”).
2. The USPTO certifies it and forwards it to the World Intellectual Property Organization (WIPO).
3. WIPO reviews and publishes the application in the WIPO Gazette of International Marks.
4. Each designated country examines the application according to its own laws.

If accepted, protection is granted as though you had filed directly in that country.

Requirements to File a Madrid Protocol Application

In order to file a Madrid Protocol application, you must:

1. Have a pending application or registration with their respective Office of Origin (the trademark office of a Madrid Protocol member country).
   • U.S. applicants must have a U.S. application or registration with the USPTO.
   • Foreign applicants can file through their home IP office (e.g., EUIPO, UKIPO, JPO) and designate the U.S. or other member countries.
2. Be either:
   • A citizen of that Madrid Protocol member country,
   • Domiciled there, or
   • Have a “real and effective industrial or commercial establishment” in that country.
   • (For example, US applicants would have to either be a citizen of the United States; be domiciled in the US; or have a “real and effective industrial or commercial establishment in the United States).

Madrid Protocol Fees

There is a certification fee charged by the USPTO for filing the Madrid Protocol application. The certification fee price will vary depending upon the number of classes of goods and services you have in your application. The more goods and services you have, the higher the certification fee will be.

The second fee is the international registration fee which is charged by the International Bureau of the World Intellectual Property Organization (“WIPO”). This fee varies depending on the countries designated in the application.

Madrid Protocol Process

Assuming you already have a pending US application or a US registration, your attorney will file the Madrid Protocol application with the USPTO located in Virginia. The USPTO will eventually transmit a certified application to the International Bureau (“IB”) which is the branch of WIPO that administers the Madrid Protocol. The IB will determine if all the requirements of the application are met. If so, the IB will publish the mark in the WIPO Gazette of International Marks and send a certificate to the owner. If there is a problem with the application, the IB will issue a notice referred to as an “irregularity notice.” This notice can be responded to and often overcome.

Once the IB approves the application, it will notify each and every country you designated, referred to as “contracting parties,” in your Madrid Protocol application. Each contracting party will then examine the application in the same manner as it would a national application made under its laws. If it approves the application, it will then issue a registration in that country.

Final Note

Your original US application is extremely important as the Madrid Protocol application depends upon the US application. If the US application is abandoned or canceled during the first five years, the mark pending with IB will be canceled as well.

Key Considerations for International Trademark Filings

• Dependency Period: For 5 years, the international registration depends on the basic filing. If the base is canceled, the international registration may fall unless “transformed” into national filings.
• Examination Timelines: Each country applies its own rules, usually within 12–18 months.
• Renewals: International registrations must be renewed every 10 years through WIPO.