The following is an edited transcript of our video The WIPO Madrid Protocol’s International Trademark Filing System Part 2.

[For Part 1, see here.]

Here is more about how the Madrid System works:

  • To obtain trademark protection in other countries, the owner will need a basic application or registration filed with a country with which:
    • you have a personal or commercial relationship, and
    • which is a part of the Madrid system
  • Once you have the application or registration, you will file for your international registration through the Office of Origin
  • The Office of Origin will certify or deny the international registration
  • If certified, it will be forwarded to the World Intellectual Property Organization (WIPO)
  • WIPO will examine your international application for formalities only and will give you an opportunity to remedy any irregularities
  • Once any irregularities are fixed, WIPO will record, publish and register your international registration, and will notify each designated country of your intention to apply for trademark protection there
  • Each country designated will examine the international application according to their national laws, and will grant or deny trademark protection
  • If granted by any designated country, that trademark registration will have the same rights as any national application filed with that country. Important note: once you have an international registration, you will be able to designate countries with WIPO.
  • Fees that you will have to pay to use the Madrid system include
    • WIPO basic fees
    • Fees of each designated country.
    • How much you pay will depend on how many countries you designate in your application

Three important things to keep in mind if you’re using the Madrid system to file for your international trademark protection:

  1. The rights and scope of the WIPO international registration cannot exceed those of your basic application or registration. That means that things such as the type of mark, the colors of your logo and the goods and services listed cannot exceed those of your basic application or registration.
  2. If there are any inconsistencies or irregularities with the basic application or registration, you will have to fix those before filing for your international application with WIPO, to avoid delays or the possibility of getting denied.
  3. There is a five-year dependency period in which your international registration will depend on the basic application or registration.

If your basic application or registration gets canceled or limited in any way, your international registration will as well. After the five-year period, you will have the option to convert your international registration into a national registration in each of your designated countries.

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