Protection of an International Trademark Trough the Madrid System

March 14, 2018

When you want to expand your business beyond your country boundaries, it is necessary that you safeguard the distinctive sign of your good, 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 make the trademark registration 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 sheltered, so that the creator will be confident without the worry that someone else uses his ideas as their own or that a third party wants to register a brand with a name that already exists.
Advantages of the International Trademark ProtectionOne 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 to protect your distinct sign in the 113 territories of its 97 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 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.
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 of 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. If you need legal advice for patent registration, call +57 310 5706331 or fill out the form in our "contact us" section. Our patent specialists are ready to assist you. Subscribe to our newsletter to stay up to date with the latest news in the legal field. Find us on Facebook at AGT Attorneys and follow us on Twitter @AttorneysAGT.