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The Madrid System Turns 30: The Pros and Cons of Using the Madrid Protocol in the United States and for U.S. Based Companies
This summer, the Madrid System turned 30 years old, and as two more countries prepare to join the Madrid Protocol we look at how the Madrid System has grown as it enters full adulthood. In 1988, there were only 25 members of the Madrid Protocol. Today, that number has quadrupled, with 105 members covering 121 countries. Canada joined the Madrid Protocol earlier this year, and Brazil announced in July that it will now be able to accept Madrid Protocol applications beginning in October 2019. The World Intellectual Property Organization (WIPO) reports that the Madrid System gives trademark owners protection to 80% of the global economy. In 1988, 20,000 registrations were issued under the Madrid System, according to WIPO, and 30 years later, WIPO reports that number has tripled to 60,000. There is no doubt that the Madrid System has assisted many companies in effectively achieving international trademark registrations by filing one trademark application with one set of fees for protection in their choice of more than 120 countries.
The Madrid Protocol is an international treaty, administered by WIPO, that facilitates international trademark registrations. It is essentially a centralized filing system that allows a trademark applicant to file an international registration in the applicant's home country and then extend that application into one or more of the member states. WIPO allows the application to be filed in one of three official languages: English, French or Spanish, reducing the need for translation costs. Countries like the U.S., the UK and Japan have not embraced the Madrid System at the same rate as international applicants have sought trademark protection in these highly desirable trademark jurisdictions. According to data from the USPTO, three to five times as many foreign applicants have chosen to extend their applications into the United States versus the number of U.S. based companies utilizing the Madrid Protocol for their outbound international protection. This indicates that especially in the U.S., the Madrid System is not nearly as popular as it is elsewhere in the world, and possibly, for many of the reasons outlined below.
What this data indicates is that for some trademark owners, it's important to take a strategic approach when embarking on an international filing strategy, and the Madrid System may not be the best choice to achieve those goals. This article explores the advantages of the Madrid System, and discusses in detail the limitations of the System, especially as it pertains to U.S.-based companies expanding abroad and foreign companies utilizing the Madrid System for trademark protection in the United States.
Advantages of the Madrid System
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