Madrid Extension, Madrid Protocol, Trademark
International Trademark Madrid Extension, Madrid Protocol

Madrid Extension

This is a page explaining the Madrid Extension for Trademarks under the Madrid Protocol. The Madrid Protocol is an agreement between Countries which allows Trademark Owners and Filers to select multiple countries in which to file a trademark application.

This site is designed to be an informative site for trademark practitioners who have filed an International Trademark Application using the Madrid Protocol.  Below are headings which when clicked provide additional information for the trademark practitioner when after filing the International Trademark Application.

 

What is the Madrid Protocol?

 

The Madrid Extension is the extension of the application of a trademark into another state (country) and is governed under the Madrid Protocol.  The Madrid Protocol is the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.  This is an international treaty that allows a trademark owner to seek a trademark registration in any of the countries that have joined the Madrid Protocol ("Contracting Party")  by filing a single application, called an "international application." The International Bureau of the World Intellectual Property Organization (WIPO), in Geneva, Switzerland administers the international registration system.


What happens after the International Bureau registers the mark in the international application?

 

Once the International Bureau registers the mark, the International Bureau will notify each Contracting Party (state/country) designated in the international registration of the request for an extension of protection to that country. Each designated Contracting Party will then examine the request for an extension of protection in the same manner as it would a national application under its laws. If the application meets the requirements for registration of that country, then the Contracting Party (state/country) will grant protection of the mark in its country.  If not, then it will issue and office action rejecting the application and then inform the applicant.

Time Limits:

There are strict time limits for refusing to grant an extension of protection (a maximum of 18 months). If a Contracting Party does not notify the International Bureau of any refusal of an extension of protection within the time limits set forth in Article 5(2) of the Madrid Protocol, the holder of the international registration is automatically granted protection of its mark in that country.

 

After the mark in an international application registers, can the holder of the international registration request an extension of protection in additional countries?

 

Yes. The holder of an international registration may designate additional Contracting Parties in a subsequent designation. A subsequent designation is a request by the holder of an international registration for an extension of protection of its international registration to additional Contracting Parties. A subsequent designation may also be used to extend protection to goods or services that were not originally extended to the previously designated Contracting Parties. For example, if a trademark owners sought international registration of five classes of goods and services, but limited the initial designation to only one class of goods to the identified Contracting Parties, the holder of the international registration can later designate any or all of the goods/services covered by the international registration to both those countries previously identified or to new countries designated in the subsequent designation.

 

What Countries are Involved in Madrid Protocol

Albania .
Algeria
Antigua and Barbuda .
Armenia 
Australia 
Austria 
Azerbaijan 
Bahrain 
Belarus 
Belgium 
Bhutan 
Bosnia and Herzegovina
Botswana
Bulgaria 
China 
Colombia 
Croatia
Cuba 
Cyprus 
Czech Republic
Democratic People's Republic of Korea
Denmark 
Egypt 
Estonia 
European Union
Finland
France
Georgia
Germany 
Ghana 
Greece
Hungary 
Iceland
India
Iran (Islamic Republic of) 
Ireland
Israel
Italy
Japan
Kazakhstan 
Kenya
Kyrgyzstan
Latvia
Lesotho
Liberia
Liechtenstein
Lithuania 
Luxembourg
Madagascar
Mexico 
Monaco
Mongolia
Montenegro 
Morocco
Mozambique  
Namibia
Netherlands
New Zealand 
Norway 
Oman 
Philippines
Poland
Portugal 
Republic of Korea
Republic of Moldova
Romania 
Russian Federation
Rwanda
San Marino
Sao Tome and Principe
Serbia
Sierra Leone 
Singapore
Slovakia
Slovenia
Spain
Sudan
Swaziland 
Sweden
Switzerland
Syrian Arab Republic
Tajikistan
The former Yugoslav
Republic of Macedonia
Tunisia
Turkey
Turkmenistan
Ukraine
United Kingdom
United States of America
Uzbekistan
Viet Nam
Zambia

Can a subsequent designation be submitted through the USPTO for forwarding to the International Bureau?

Yes. If the holder of an international registration is a national of, has a domicile in, or has a real and effective business or commercial establishment in the United States and the international registration is based on a U.S. application or registration, then the subsequent designation may be submitted to the USPTO using either the electronic form provided or on paper. A USPTO transmittal fee is required in either case. The holder also has the option of filing a subsequent designation directly with the International Bureau.

 

USPTO Office Action

If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter ("Office Action") explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application.  Only attorneys licensed to practice in any state of the United States are authorized to file responses to Office Actions.  Therefore, non-US attorneys must associate with a U.S. trademark attorney to continue pursuit of a registration.  This site's sponsor Collard & Roe, P.C. has substantial experience in handling these types of applications.  The applicant's response to the Office action must be received in the Office within six (6) months of the mailing date of the Office action, or the application will be declared abandoned. If you would like further information or assistance please contact Collard & Roe, P.C. at sbellus@collardroe.com