Trade Marks

The Big 100: Register your Trade Mark in up to 100 Countries via the International Trade Mark Registration System (Madrid Protocol)

December 21, 2017

The international trade mark registration system (known as the Madrid Protocol) enables brand owners to file a single trade mark application covering up to 100 countries worldwide. This is a cost-effective way of obtaining trade mark registration in multiple countries relative to filing separate national trade mark applications in each country, which can be very expensive.

The international trade mark system now offers brand owners impressive global coverage across Asia, Africa, Europe, the Middle East, the Pacific Rim and the Western Hemisphere. It enables brand owners to extend their brands’ protection to multiple international markets relatively quickly, easily and at a comparatively low cost, through a single international trade mark application.

Full list of countries that are a part of the Madrid Protocol.

Key benefits of the international trade mark system

  • One central application - There is no need to file separate national trade mark applications in each country or region of interest. A single International trade mark application is filed, and the individual countries of interest are then “designated” on the international application.
  • Reduced costs - The cost of obtaining trade mark registration in multiple countries is generally much more cost effective than filing separate national or regional trade mark applications in each individual country or region. ,/p>
  • Faster registration – An international registration is obtained relatively quickly, usually within 6 months, following which the national trade mark offices of the designated countries have up to 18 months in which to grant or refuse the national registration. For many countries, this is often quicker than the examination process for direct national applications.
  • One language - An international application can be filed in one language, regardless of the national languages of the countries designated on the international application.
  • One renewal fee – International registrations are renewed centrally at the World Intellectual Property Organization (WIPO), removing the administrative burden and higher costs associated with renewing individual national trade mark registrations at the respective national trade mark offices.
  • Centralised administration – Any changes to an international registration, such as a change in name, ownership or address, are made centrally at WIPO.
  • No need to appoint a local associate – Unless a national objection or opposition is received (via the national trade mark offices of the designated countries), there is no need to appoint a local associate in each country, which can help to reduce costs.
  • Subsequent Designation – The international system allows brand owners the flexibility of adding additional countries to an international registration at any point in the future, in order to extend the geographical scope of their trade mark protection to suit current and future commercial activities. Trade mark portfolios can therefore be expanded and enhanced by “rolling out” an international trade mark registration to new market territories of interest as and when required, as part of an international business strategy.

An international trade mark registration can therefore be an important tool in the global development of a brand. The international trade mark system can help individuals and businesses to achieve international commercial objectives by enabling them to register their trade marks throughout the world relatively quickly, easily and at a comparatively low cost.

Swindell & Pearson is a UK based firm of patent and trade mark attorneys that has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 135 years. Based in the East Midlands, the firm has offices in Derby, Stoke, Wolverhampton and Stafford as well as in Sheffield. To find out how Swindell & Pearson can help you and your business with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.