Foreign Trademark Registration Options: Madrid Procotol vs. Direct Foreign Filing
Trademark rights are territorial. Your US trademark registration does not provide you with rights in foreign countries. You can apply for trademark registration in foreign countries through two routes:
- filing a single Madrid Protocol for all Madrid member countries, or
- filing an individual trademark application separately in each desired foreign country or region.
Need to register your trademark in a foreign country? Call Vic at (949) 223-9623 or email vlin@icaplaw.com to explore your international trademark filing options.
What is the Madrid Protocol?
Under the Madrid Protocol, you can file a single trademark application designating multiple foreign countries. So the Madrid Protocol application can be a cost-effective one-stop shop for international trademark registration.
Keep in mind a Madrid application starts the process in your chosen foreign countries. If and when a foreign IP office rejects your trademark, you will likely need to engage a foreign IP attorney to respond to the rejection.
Here’s a list of member Madrid countries.
Central Attack: What is a disadvantage of the Madrid Protocol?
One potential drawback of a Madrid filing is that the international registration is tied to the US application (“base application”) for the first five years. So, if the US application is abandoned during the first five years after the International Registration date, then the Madrid application will also be abandoned in the designated foreign countries.
There are no guarantees, however, that your US application will mature into a registration. If your trademark has a higher probability of refusals based on likelihood of confusion or mere descriptiveness, then you might want to avoid the Madrid Protocol. Instead, consider filing directly in foreign countries as discussed below.
This will not be an issue if the US application matures into a registration since the next renewal (post-registration maintenance) of the US registration will not be due until the 6-year anniversary of the US registration date.
How to register trademarks by directly filing in foreign countries
The second option of individual filings is the only option available for non-member countries like Canada and Taiwan (as of the date of this post). Direct filings make sense if you’re interested in only a limited number of countries since the cost savings of a Madrid application will be less significant.
As discussed above, direct foreign filings also make sense when there is a higher risk that your US trademark filing may go abandoned or never get registered.
Furthermore, each country’s IP office will have its own particular rules and preferences concerning the identification of goods and services. By using experienced local trademark counsel, you may save some time and expense in the long run by avoiding rejections due to unacceptable product descriptions.
When is the foreign filing trademark deadline?
A foreign trademark application filed within six months of the filing date of your U.S. trademark application can benefit from a priority claim to your earlier U.S. filing date.
After six months, you can still file in foreign countries, but without the priority claim.
Can you file foreign trademark applications after 6 months?
Yes, you can file foreign after 6 months without the priority claim. So any foreign trademark applications filed after 6 months will not get the benefit of your earlier US filing date.
Can a single trademark application cover all EU countries?
You can file a single trademark application with the EUIPO to cover all European Union countries. Since the UK is not included in this EU-wide filing, you would need to file a separate UK trademark application.
Need to file a foreign trademark application?
Contact experienced patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help obtain international trademark protection.
