What are the Madrid Protocol and the Madrid Agreement?

The Madrid System, which includes the Madrid Protocol and the Madrid Agreement, serves as a central hub for trademark registrations, allowing trademark owners to extend their applications to other countries. However, the process can be a bit complex:

Applicants must meet specific criteria to apply for this type of protection. Only individuals or legal entities with a genuine and active industrial or commercial presence in, or who are domiciled in, or are nationals of a country that is a member of the Madrid Agreement or Protocol, or who have such a presence in, or are domiciled in, the territory of an intergovernmental organization that is a member of the Protocol, or are nationals of a Member State of such an organization, can file an international registration application.

For instance, if you reside in the USA, you would register your trademark there and then extend it to other countries through this office. The same process applies if you are a national of another country. The "country in which the trademark you wish to extend is registered" refers to your home country or domicile as mentioned earlier.

To extend a trademark to other members of the Madrid System, you must submit the request to WIPO via the trademark's Office of origin. Each country where you want to expand will review the trademark and can either accept or reject it. Once accepted by member countries, WIPO publishes, records, and notifies the designated parties and issues the certificate. Each trademark office individually handles the examination, objections, and oppositions. From the registration or recordal date, the mark's protection in each Contracting Party is the same as if it had been directly filed with that Party's Office. If no refusal is notified to the International Bureau or if a refusal is later withdrawn, the mark's protection in the concerned Contracting Party is the same as if it had been registered by that Party's Office.

It's important to note that if the trademark office objects to your application or a third party files an opposition, the attorney from your base country will need to hire a local attorney, as they cannot respond to the trademark office themselves. If you've already submitted a WIPO registration and need an attorney to address an objection or opposition, please fill out the contact form below.