The World Intellectual Property Organization ("WIPO") announced that, effective October 2, 2019, Brazil will join the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, or the Madrid System. The Madrid System is the international system administered by WIPO that allows trademark applicants to seek and maintain trademark registrations outside their home countries. Brazil is the last of the ten largest economies (as defined by the IMF) to join the Madrid System and will become the 121st member worldwide.
What does this mean and why should you care?
The Madrid System allows trademark applicants and registrants to seek protection in other member countries by filing a single application through their home trademark office. For U.S. applicants and registrants, this means that they can file a single international trademark application with the U.S. Patent and Trademark Office and seek protection in any one of the 121 member countries and territories, including Brazil. Because this can reduce filing and other fees and otherwise streamline the process of obtaining registrations in multiple jurisdictions, the Madrid System can be useful for newer brands or brands that need foreign registrations more quickly to conduct business abroad.
Applicants should be aware, though, that each international registration is based on the application or registration in their home countries, otherwise known as the "basic application or registration." Consequently, if the basic application or registration is cancelled, then the international registration will be cancelled, placing the foreign applications and registrations in jeopardy. For example, if a U.S. applicant's basic U.S. application is denied, then the international registration will be cancelled and the applicant then must convert all of its Madrid System foreign applications and registrations to national applications and registrations in each jurisdiction. This can increase filing fees and undermine any streamlining originally achieved through the Madrid System. Thus, it may be advisable for some applicants to forego the Madrid System in favor of filing individual national applications.
Regardless, though, the Madrid System remains a viable and useful option for many trademark applicants, and is now enhanced by the addition of Brazil.
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