The Madrid Protocol and Other Services
Contents
What is it
The Madrid Protocol is an alternative route to international trademark registration.
Rather than filing your trademark directly with each national trademark office, the Madrid Protocol allows you to file a single application with the World Intellectual Property Organization (WIPO) to protect your trademark in multiple countries at once.
The Process
Pre-requisite: The Basic Application
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Before filing a Madrid Protocol application, ensure that your home country is a member of the Madrid Protocol.
a. If you intend to file the trademark under your company, your home country would be the country where your company is incorporated.
b. If you are filing it under your personal capacity, it would be where you are a citizen or permanent resident.
c. For an updated list of member countries, please click here.
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File a trademark application with the trademark office in your home country. This is known as the basic application.
The Madrid Protocol Application
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File your Madrid Protocol application with your home country. The cost of the application depends on the number of classes in your application and the countries where protection is sought.
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Your Madrid Protocol application will be examined by the trademark office for formality matters before it is forwarded to WIPO.
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The application will be examined by WIPO before it is forwarded to the respective trademark offices of the countries chosen.
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The trademark offices will examine the application based on their individual standards. Some offices may object to your application, while it may be accepted in others.
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For countries where your application has been objected to, you will need to respond to them individually. The office will usually require you to have an address in that country, or to appoint a local agent to represent you.
| Direct Route | Madrid Protocol |
|---|---|
| Assumption | |
As each country has different processes and requirements for filing a trademark, doing so by oneself can be extremely difficult. As such, for this comparison, we shall assume that an agent, such as Cat and Pillar, is used for the trademark applications via this route. |
The Madrid Protocol allows you to file your trademark with multiple trademark offices with a single application form with minimum requirements to fulfil. As such, we shall assume that you are filing the Madrid Protocol application with no agent. |
| Duration | |
Faster registration process in general as the applications are directly filed with the respective trademark office. For some countries, this can be as quick as 2 to 3 months. |
Slower registration process in general as the applications are first examined by the trademark office in the home country, followed by WIPO, before they are finally forwarded to the respective trademark offices for further examination. This could easily lengthen the process by 6 months to a year. |
| Time Limit | |
No time limit to receiving your registration. |
Trademark offices need to raise any objection to your application within 18 months from receiving it from WIPO. If they fail to do so, your trademark will be automatically considered registered. |
| Duration | |
Faster registration process in general as the applications are directly filed with the respective trademark office. For some countries, this can be as quick as 2 to 3 months. |
Slower registration process in general as the applications are first examined by the trademark office in the home country, followed by WIPO, before they are finally forwarded to the respective trademark offices for further examination. This could easily lengthen the process by 6 months to a year. |
| Cost Effectiveness | |
Higher application fees when applying to 4 or more countries. However, it is easier to avoid objections via this route as agents are able to customize your application for each of the countries. As such, it is expected to incur lower additional costs after application. Overall, the cost effectiveness is about the same. |
Lower application fees when applying to 4 or more countries. However, objections are more likely, unless you put in the work to customise and check the application for each of the countries selected. As such, it is expected to incur higher additional costs after application, including the cost of appointing agents to deal with the objections. Overall, the cost effectiveness is about the same. |
| Need for translation | |
Applications need to be translated for countries where English is not the official language. |
The application can be filed entirely in English. No translation is needed. |
1. Assumption
Direct Route
As each country has different processes and requirements for filing a trademark, doing so by oneself can be extremely difficult.
As such, for this comparison, we shall assume that an agent, such as Cat and Pillar, is used for the trademark applications via this route.
Madrid Protocol
The Madrid Protocol allows you to file your trademark with multiple trademark offices with a single application form with minimum requirements to fulfil.
As such, we shall assume that you are filing the Madrid Protocol application with no agent.
2. Duration
Direct Route
Faster registration process in general as the applications are directly filed with the respective trademark office. For some countries, this can be as quick as 2 to 3 months.
Madrid Protocol
Slower registration process in general as the applications are first examined by the trademark office in the home country, followed by WIPO, before they are finally forwarded to the respective trademark offices for further examination.
This could easily lengthen the process by 6 months to a year.
3. Time Limit
Direct Route
No time limit to receiving your registration.
Madrid Protocol
Trademark offices need to raise any objection to your application within 18 months from receiving it from WIPO.
If they fail to do so, your trademark will be automatically considered registered.
4. Cost Effectiveness
Direct Route
Higher application fees when applying to 4 or more countries.
However, it is easier to avoid objections via this route as agents are able to customize your application for each of the countries. As such, it is expected to incur lower additional costs after application.
Overall, the cost effectiveness is about the same.
Madrid Protocol
Lower application fees when applying to 4 or more countries.
However, objections are more likely, unless you put in the work to customise and check the application for each of the countries selected. As such, it is expected to incur higher additional costs after application, including the cost of appointing agents to deal with the objections.
Overall, the cost effectiveness is about the same.
5. Need for Translation
Direct Route
Applications need to be translated for countries where English is not the official language.
Madrid Protocol
The application can be filed entirely in English. No translation is needed.
Verdict
On the surface, the Madrid Protocol seems like a more convenient route for international trademark protection. However, there are many underlying costs and delays in the process that may only surface later on.
For most cases, Cat and Pillar recommends filing your trademarks via the direct route. However, we may recommend the Madrid Protocol route when it is suitable, on a case-by-case basis.
Other Services
In addition to trademark application and renewal, we can assist you in other matters relating to your trademark including:
- responding to objections from the IP office
- amending details in your trademark application
- assigning your trademark to a third party
Contact Us
If you wish to find out more about the Madrid Protocol or our other services, or are looking for help to file a Madrid Protocol application, please do not hesitate to contact us.