The International Trademark System & Madrid Protocol Explained

May 10, 2022

We know you want peace of mind when protecting your brand. With an increasingly global economy and an international market of counterfeits and trademark infringement, you might be considering whether you should apply for an international trademark.

If you’re new to the process and want to know if a worldwide trademark is worth it and what the Madrid Protocol is all about, read on.

How To Tell If An International Trademark Is Right For You

An international trademark isn’t for everyone, but it can offer protections that filing just within the U.S. cannot. If you run a jewelry business where you make your products yourself and sell them entirely at local craft markets, you might not need an international trademark. However, many companies rely on online sales file for a global trademark so their goods or services can be purchased anywhere on the globe.

Many companies consider an international trademark when they:

Expand the business outside of the U.S.

Let’s say a business is booming in the U.S., and now it’s looking to open a base of operations in another country, or even a few different countries. Some companies register an international trademark in those countries to protect their brand. If you expand outside the U.S. but only have a trademark in your parent country, your business is vulnerable to people who want to steal your brand and profit from your work.

Rely on online sales to sell products

Many companies use online sales to promote their brand, which means they can sell their goods to anyone in the world. This allows for exponentially increased business growth and brand recognition. The sky (and your shipping arrangements) are the limit for your business if you sell your products globally. 

However, as your brand increases in popularity internationally, it’s also possible that people could try to steal your hard-earned success through counterfeiting and brand infringement. In this case, a company might register a trademark internationally in the countries where it does the most business.

Conduct manufacturing abroad

It’s essential to consider your supply chain when applying for a trademark. Where are your products manufactured? Which countries supply you? Which countries supply your suppliers? 

At any point in this supply chain, your trademark can be vulnerable to counterfeiting, brand theft, and illegal misrepresentation of your brand. Your manufacturer could even cut you out and sell to consumers directly using your brand and trademark. Think about your supply chain and the countries that manufacture your products when considering international trademark registration.

Have foreign-based partners

If business partners live in other countries, a company might choose to file internationally to protect the brand in those locations. You might at some point consider opening up branches in the country or countries in which your partners live. Additionally, your brand can be susceptible to trademark infringement in any location where it has a toehold.

Want to protect their brand in countries where brand theft is high

Counterfeiting is an abundant industry overseas, so some companies choose to protect trademarks and products from being illegally copied and sold by those looking to steal profits and benefit from the work. By registering their trademark internationally in countries where counterfeiting and brand theft are high, they stifle the chances that someone could profit off of their brand. 

The Madrid Protocol and What It Means for You

The Madrid Protocol refers to one of two treaties for registering trademarks in over 110 countries covered in the agreement. All you have to do is file one application through the country where you legally reside or have an industrial or commercial establishment. It provides an easy and cost-effective way to register your mark in multiple countries internationally.

Trademarks in Madrid Protocol Countries

Though the Madrid Protocol allows for unilateral coverage of your trademark in over 110 countries worldwide, you still need to apply for each country and pay the requisite fees for each country. The benefit of the Madrid Protocol is that, because you’ll only be using one application, you’ll only need to pay one application fee. 

Once the international trademark registration application is complete, each individual Madrid Protocol country where you applied decides whether to grant your mark protections. Your international trademark is tied to your original application, so if the USPTO cancels your trademark for any reason, your worldwide trademarks will be canceled as well.

Each country has slightly different rules, but any of them will likely reject an application if there’s already a similar mark in use in the applied-for country. You can also run into problems if any Madrid Protocol country issues your trademark an office action, which is basically a partial rejection. If you get one, it may be beneficial to hire legal counsel in that country to help you navigate your response. 

The Madrid Protocol also makes it easy to unilaterally change your address, change your category of goods/services, or renew your trademark. All you need is one application with the USPTO — you don’t have to monitor separate processes in each country. The World Intellectual Property Organization’s International Bureau will coordinate all modifications and renewals across all the countries you registered in.

How to Apply for an International Trademark

If you’re located and do business in the U.S., you’ll start by filing a basic trademark registration with the USPTO. You’ll need to register your trademark internationally with the Trademark Electronic Application System for International Applications (TEASi) within six months of registering your U.S. trademark to have the same filing date. If you file after six months, your international trademark will not have the same application date.

When you register your international trademark, you can select the countries in which you want your trademark protected. There are fees for each country you apply for, but you’ll only need to pay one application fee.

Your address, email, phone number, mark, and classes of goods/services must match what you’ve registered on the USPTO basic application. If your international application meets the requirements, the USPTO will confirm that the information corresponds with what they have in their basic registration and forward the information to the International Bureau.

From there, trademark offices in each of the Madrid Protocol countries you want protection will review your trademark and approve or deny your application within their borders. They may also issue office actions that you’ll need to respond to in a timely manner, usually with help from legal counsel in those countries. 

How Does International Filing With Trademark Engine Work?

Registering your trademark and protecting your brand internationally can be confusing, but Trademark Engine makes the process as smooth as possible. With Trademark Engine, it’s easy to protect your brand identity throughout the U.S. and internationally, all in one fell swoop. 

Your brand will be protected in the U.K., China, Mexico, and India, reaching over 3.3 billion people worldwide. An international trademark might be beneficial if your business plans to expand abroad or you’re concerned about someone counterfeiting or infringing on your brand. 

To get started, click the “Start My Trademark Registration” button on our website. Fill out all of your information through the Trademark Application Process. The option to file internationally will appear as an add-on towards the end of the process.

If you choose not to get an International Trademark when you first file with the USPTO, don’t worry. You can still select the international trademark add-on at any time. If you want your international trademark to have the same filing date as your U.S. trademark, you should apply within six months of the original date you filed with the USPTO.

After we help you file your U.S. trademark with the USPTO, we’ll help you register your trademark internationally. It’s a service we provide automatically to allow you to sit back, relax, and protect your brand without having to worry.

Ready to get started? Get your trademark registered internationally today by heading to our home page and clicking “Get Started.

Trademark Engine is not a law firm, and no information on this website constitutes or is intended to convey legal advice. General information about the law is not the same as advice about the application of the law in a particular factual or legal situation. Individual facts and circumstances as well as legal principles including but not limited to the ones referenced on this website can affect the outcome of any given situation. 

Trademark Engine cannot and does not guarantee that an application will be approved by the USPTO, that a mark will be protected from infringement under common U.S. trademark law, or that any ensuing litigation or dispute will lead to a favorable outcome. If you have an interest in obtaining legal advice with respect to a specific situation or set of circumstances, you should consult with the lawyer of your choice.