Mexico is now part of the Mardrid Protocol.

Mexico has signed on to the Mardrid Protocol.

The Madrid Protocol is one of two treaties comprising the Madrid System for international registration of trademarks.  The protocol is a filing treaty and not a substantive harmonization treaty.

The protocol provides, in some cases, a cost-effective and efficient way for trademark holders to get protection for their marks in multiple countries by filing one application with a single office, in one language, with one set of fees, in one currency.   No local agent is needed to file the application as is the case if you file a trademark in each individual country.  However, while an International Registration may be issued, it remains the right of each country to determine whether or not protection for a mark may be granted.  You can be denied registration if the translation of your mark does not meet the standards of a particular country or, as has happened, the translated mark is offensive.

The Madrid system comprises two treaties; the Madrid Agreement Concerning the International Registration of Marks,which was concluded in 1891, and entered into force in 1892, and the Protocol Relating to the Madrid Agreement, which came into operation on 1 April 1996. The Madrid Agreement and Madrid Protocol were adopted at diplomatic conferences held in Madrid, Spain.

The Madrid system is administered by the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland.

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The Madrid Agreement was originally intended to provide for an international registration system, but did not achieve this because of  a lack of international acceptance and the lack of a true registration system.

Many non-member countries of the Madrid Agreement, including the United Kingdom, the United States, and Central American, South American and Asian countries, such as Japan,  are not part of the Madrid Agreement, but some have agreed to the Madrid Protocol.

Another problem, whether true or not, is that countries with a large amount of trademark filings, like the United States, Japan, and Canada, have not joined the Madrid Agreement due to the possibility of a “central attack” on the mark.   A central attack can occur if problems arise in the home registration that an international registration is  based.  The international registration would be cancelled or limited to the same extent that the home registration was cancelled or limited.

So any refusal, withdrawal or cancellation of the basic application or basic registration within five years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent.

The effects of a central attack can be mitigated by transforming the international registration into a series of applications in each country, a process known as ‘transformation.’ Although transformation is an expensive option, the resulting applications will receive the registration date of the international registration as their filing date.  However, any cost savings will have been lost, and in the end, it will most likely be far more expensive than filing in the individual countries.

Additionally, unless you are filing for protection in a lot of countries, the actual cost savings are not there.

How Can I Help?

If you need help with a trademark in the United States or around the world, or know someone that can use my help, please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman

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