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Protection of an International Trademark Through the Madrid System

June 21, 2023

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Trademark Registration Needs the Proper Legal Support

When you want to expand your business beyond your country boundaries, it is necessary that you safeguard the distinctive sign of your goods, enterprise, or service in the new territory. At that moment is when the protection of international trademarks tools become essential. One of these tools is the Madrid System, through which it is possible to register trademarks in different countries. This modality allows your brand to be protected from being used by a third party without authorization.

Madrid System is a mechanism of presentation and management of trademarks for the achievement of an international registration. This treaty is administered by the World Intellectual Property Organization (WIPO) and it is governed in accordance with two agreements: Madrid Agreement and the Madrid Protocol; countries and intergovernmental organizations adhered to them, conform the Madrid Union. When the creator of a brand performs the registration process, his invention will be protected and confident that no one else can use their trademark.

What is the Madrid Agreement?

The Madrid System, also known as the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol, is an international system for the registration of trademarks. It provides a streamlined and cost-effective way for businesses and individuals to protect their trademarks in multiple countries.

Under the Madrid System, a trademark owner can file a single application, known as an international application, with the World Intellectual Property Organization (WIPO) to seek protection for their trademark in multiple member countries. The Madrid System currently has 114 member countries, making it a widely recognized and utilized system for international trademark protection.

Advantages of the International Trademark Protection

One of the benefits of the Madrid System is that it gives the opportunity of protecting a trademark in many countries around the world, among which the owner is able to select the ones that suit; for this, just need to present a written request in only one language and the payment receipt of a single rate. If we compare this procedure with the choice of doing one request for each country individually, we can notice that the protection of international trademarks through the Madrid System has an advantage in terms of the number of procedures, complexity, time, and money invested. Likewise, if you need to make any modification after the registration, like the holder's name or address, it can be done through one single procedure.

The protection of international trademarks through the Madrid System, covers a wide geographical area, since it allows protecting your distinct sign in 114 territories of its members, that represent more than an 80% of the world trade, among which are: the African Intellectual Property Organization (AIPO), the Europe Union (EU), most of the developed countries and developing countries.

Another positive aspect of the system of protection of international trademarks is that it makes the renovation process easier because you have to ensure only one deadline, instead of having one for each selected country; so that, once the procedure is done, the protection of international trademarks will apply to all the chosen countries. If your business expands to other countries that belong to the Madrid Union, you can include them at any time through an extension request, therefore, your trademark will be protected as your company is growing.

What are the benefits of the Madrid System?

The advantages of the Madrid System include:

  1. Simplicity: The system allows for a centralized filing and management of trademark applications, reducing administrative burdens and costs.
  2. Cost-effectiveness: Filing a single international application is generally more cost-effective than filing separate applications in multiple countries.
  3. Flexibility: Trademark owners can expand their international protection by designating additional member countries at a later stage.
  4. Centralized management: Changes, such as renewals or changes in ownership, can be easily managed through a single application.
  5. Efficiency: The examination process for international applications is conducted by national trademark offices based on their own domestic laws and procedures, which can lead to faster registration times.

It's important to note that while the Madrid System simplifies the process of filing and managing international trademark registrations, it does not create a unified international trademark registration. Each designated country still evaluates the trademark application according to its own laws and regulations.

If you are considering filing an international trademark application, it is recommended to consult with a trademark attorney or intellectual property professional who can provide guidance specific to your situation and help navigate the complexities of the Madrid System.

Steps to Make the Protection of International Trademarks Registration

  1. If you want to make an international request, you need to make the previous registration of your brand, or at least make a request to do it in your intellectual property office of origin or your country. In the case of Colombia, it must be processed in the Superintendencia de Industria y Comercio (SIC). After fulfilling this requirement, you can make the request for protection of international trademarks through the same intellectual property office, which will be in charge of doing your certification and of its subsequent shipment to the WIPO.

  2. The WIPO makes an assessment of the international request; after it is approved, the brand is registered in the international registration and posted by the WIPO Gazette of International Marks. Then, the WIPO sends a certificate of the international registration to the applicant and will communicate this event to the intellectual property offices of all the involved countries.

  3. The intellectual property offices, located in each one of the countries where you require your trademark protection, will make the corresponding assessment as if it were a national registration application taking into account its laws; this will take between 12 and 18 months. Later, the WIPO will settle the decisions made in the International Registry and will communicate you what they determined in relation to your case.

To protect your trademark internationally, you have AGT Attorneys. Our specialized law firm offers you services in registration and legal counseling to make the protection of international trademarks in the United States, Latin America and Europe.

Do not hesitate to contact us by filling this Contact Form or through our WhatsApp number +57 3105706331.

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Categories: Brand Registration

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