News & Insights

Colombia and Mexico Enter the Madrid Protocol for the International Registration of Marks

February 13, 2013

By: John L. DuPré and Christopher K. Albert

Hamilton Brook Smith Reynolds Alert

• Filing trademark registrations via the Madrid Protocol permits low-cost filing and renewal of trademark registrations in nearly 90 countries
• Accession by Mexico marks a further extension into Latin America of the international trademark regime

Colombia and Mexico have recently signed on to an international trademark treaty that makes filing for trademark protection in those countries easier and less expensive. Since April 1, 1996, some applicants who wished to obtain protection for their trademarks in foreign countries could take advantage of substantial cost savings and efficiencies by filing applications for International Registration through the World Intellectual Property Organization (“WIPO”) and requesting in those applications extensions of protection for the trademarks into certain countries. This option was only available, however, when the country of the applicant and the countries where protection was requested had agreed to be members of the treaty (“the Madrid Protocol”) that allowed for such International Registration. Until November 2, 2003, virtually all of the member countries were in Europe and Asia. At that time, the United States adopted the treaty provisions and became the first major country in the Western Hemisphere to allow its applicants to obtain the benefits of this process.

Colombia became a member of the Protocol in August 2012 and now Mexico continues the expansion of coverage into Latin America.¹ Effective February 19, 2013, Mexico will become the 89th member of the Madrid Protocol. Mexico’s accession to the Madrid Protocol does not affect existing trademark rights, but prospective applicants considering future trademark filings in Mexico should evaluate the benefits of filing via the Madrid Protocol.

Under the Madrid Protocol, a trademark applicant begins by filing an application for registration in its home country, which begins the six-month priority filing period. The advantage of this priority claim is that the rights holder will be deemed to have filed in other countries on the same date as the filing in its home country. This priority claim is particularly important in first-to-file countries, such as Mexico, where the filing date determines rights.

Protection under the Madrid Protocol is sought by filing, during the priority period, an application for International Registration that designates countries into which extensions of protection are desired. After the International Registration issues, WIPO notifies the designated countries that the applicant has sought protection. The mark can then be subject to separate examination and opposition proceedings in each country. Once the examinations are completed, protection is extended to the designated countries, and the International Registration is subject to a single renewal fee, which is substantially less expensive than renewing individual registrations in the designated countries.

While filing via the Madrid Protocol can substantially reduce costs, it is not without its drawbacks. Importantly, the listing of goods covered by the Madrid Protocol filing can be no broader than those allowed in the applicant’s home country registration. This may be a particular concern for U.S. applicants, where the scope of the home registration must be limited to actual use. Additionally, the validity of the International Registration stands or falls with the home registration. In other words, if the home registration is invalidated, so is the International Registration.

We encourage you to carefully weigh the advantages and disadvantages of foreign trademark registration via the Madrid Protocol and to contact us with any questions.

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1} Although there is a movement in Canada to adopt the Madrid Protocol there, it is not clear how long it will take for them to agree to the treaty and complete the coverage for North America.

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