How to Register an International Trademark: A Step-by-Step Guide
Expanding your business globally involves not just broadening your market reach but also securing your brand. Registering your trademark internationally is essential to protect the investment you've made in developing your brand identity and to prevent its unauthorized use by others.
This guide will walk you through the process of registering an international trademark under the Madrid System, which encompasses both the Madrid Agreement and the Madrid Protocol, providing a streamlined method for securing trademark protections in multiple countries through a single application.
Understanding the Madrid Trademark System
The Madrid System provides a centralized framework for securing trademark protection in up to 130 countries, known collectively as the Madrid Union. This system allows you to safeguard your intellectual property (IP) rights internationally with a single application, streamlining the process of obtaining trademark protections across multiple jurisdictions. By utilizing the Madrid System, businesses can significantly reduce the complexity and expense associated with filing separate trademark applications in each country. But see Register Your China Trademarks in China, not Madrid, for why filing a Madrid application can be a big mistake for some countries.
What Can Be Protected as a Trademark?
An international trademark can protect various elements of your brand identity, making them exclusive to your business across the globe. Below is a comprehensive overview of what can be registered under an international trademark, with well-known examples to illustrate each category:
- Names: For example, "Google" is not just a household name for internet search but also a globally protected trademark, ensuring it is associated exclusively with the company.
- Logos: The Apple Inc. logo, which features an apple with a bite taken out, is one of the most globally recognized and legally protected logos.
- Images: The Starbucks Mermaid, or siren, is central to Starbucks' branding and is instantly recognizable, making it a protected image under their trademark.
- Colors: Tiffany Blue is a specific shade used by Tiffany & Co., protected as a trademark and instantly identifiable with the brand.
- Patterns: The distinctive check pattern known as Burberry Plaid is trademarked by Burberry and recognized worldwide.
- Shapes: The unique contour bottle shape of Coca-Cola is not only iconic but also a registered trademark in the beverage industry.
- Product Packaging: Pringles' cylindrical can and the distinctive shape of the chips are trademarked, demonstrating how packaging can be protected.
- Sounds: MGM's Lion Roar is a sound trademark, specifically registered and used in MGM movies.
- Scents: The unique scent of Play-Doh is trademarked, evoking nostalgia and brand recognition whenever it is encountered.
A single international registration can cover one or more of these elements, provided they collectively form a distinctive sign that identifies and differentiates your products or services in the marketplace.
Eligibility for Filing an International Trademark
To be eligible for filing an international trademark under the Madrid System, you must demonstrate a direct connection to a member of the Madrid Union. This connection can be established in one of the following ways:
- Citizenship in a Contracting State: You are a citizen of one of the countries that is a member of the Madrid Union.
- Residence in a Contracting State: You have a residence in a member country, indicating your personal or business presence.
- Owning a real and effective industrial or commercial establishment in a Contracting State: You own a business or industrial operation that is actively functioning in one of the member countries.
Below, we have provided a list of contracting countries to help you determine if your connection qualifies you to apply for an international trademark.
Duration and Scope of Protection of Your International Trademark
An international trademark is valid for 10 years from the date of registration, with the opportunity for indefinite renewal every decade. This flexibility allows you to maintain protection for your trademark as long as necessary.
Additionally, you have the liberty to choose how extensively to protect your trademark across the member countries of the Madrid System. You can initially select specific countries where you seek protection and expand your coverage as your business grows, adapting to new markets and opportunities. This scalable approach ensures that your trademark protection can evolve in tandem with your business strategy.
How to Apply for an International Trademark Under the Madrid System: Step-by-Step
Step 1: Apply at a National Trademark Office
To begin the application process for an international trademark, you first need to file an application through the national trademark office of your home country, provided you meet the eligibility criteria. Below are some of the national offices where you can start this process:
- United States: United States Patent and Trademark Office (USPTO)
- Canada: Canadian Intellectual Property Office (CIPO)
- Mexico: Instituto Mexicano de la Propiedad Industrial( IMPI)
- United Kingdom: Intellectual Property Office (IPO)
- Germany: Deutsches Patent- und Markenamt (DPMA)
- France: Institut National de la Propriété Industrielle (INPI)
- Spain: Oficina Española de Patentes y Marcas (OEPM)
- Italy: Ufficio Italiano Brevetti e Marchi (UIBM)
For your application, you will need to complete a Form MM2. After submitting the MM2 Form, your national office will assess your application for any potential defects. If everything is in order, they will forward your application to the World Intellectual Property Organization (WIPO) for international processing. This step is crucial as it bridges your initial national registration with international protection under the Madrid System.
Step 2: WIPO Examination
Once your application is forwarded to the World Intellectual Property Organization (WIPO), it undergoes a formal examination process. WIPO reviews your application to ensure there are no issues and that you qualify as a legitimate applicant under the Madrid System's regulations.
Following approval, your trademark is then published in WIPO's International Trademark Gazette. This publication serves as a global notification of your claim to the trademark and a chance for any parties interested to view or contest the registration.
Step 3: National Examination in Designated Countries
After publication in the WIPO Gazette, the application process enters a phase similar to registering a national trademark in each country you've designated. Each national trademark office in these countries conducts its own review of your application. This involves publishing the application locally, which allows a period for any existing trademark holders to lodge objections if they believe your trademark infringes on their rights.
If there are no objections, or once any issues are resolved, your trademark will be officially registered in those countries. This phase is crucial as it determines the acceptance and protection of your trademark on a country-by-country basis, adhering to local laws and regulations.
Monitoring and Renewing Your International Trademark
Trademark Monitoring
Once your trademark is registered internationally, active monitoring is essential to prevent unauthorized use and to ensure its continued protection. Since local regulations can vary significantly, it is usually necessary that you consult with a local intellectual property (IP) agent to help maintain and enforce your rights effectively.
Trademark Renewal
International trademarks need to be renewed every 10 years.
The World Intellectual Property Organization (WIPO) does not send reminders about renewal deadlines, so it's crucial to have a reliable system in place to track these dates. Working with an interational IP lawyer to handle renewals can help avoid lapses in protection.
Conclusion
Registering an international trademark is a rigorous process, but it provides substantial protection for your brand as it enters global markets. For those who may find the process daunting, enlisting the expertise of an experienced international IP attorney is advisable to ensure that your trademark is thoroughly protected across all relevant markets.
Contracting Parties of the Madrid Agreement and Madrid Protocol
The Madrid Union currently has 115 members, covering 131 countries. These members represent more than 80% of world trade, with potential for expansion as membership grows. This list is the list of the countries and intergovernmental organizations mentioned in the Madrid Agreement Concerning the International Registration of Marks (status as of May 3, 2024):
- Afghanistan
- Albania
- Algeria
- Antigua and Barbuda
- Armenia
- Australia
- Austria
- Azerbaijan
- Bahrain
- Belarus
- Belgium
- Belize
- Bhutan
- Bosnia and Herzegovina
- Botswana
- Brazil
- Brunei Darussalam
- Bulgaria
- Cabo Verde
- Cambodia
- Canada
- Chile
- China
- Colombia
- Croatia
- Cuba
- Cyprus
- Czech Republic
- Democratic People's Republic of Korea (North Korea)
- Denmark
- Egypt
- Estonia
- Eswatini
- Finland
- France
- Gambia
- Georgia
- Germany
- Ghana
- Greece
- Hungary
- Iceland
- India
- Indonesia
- Iran (Islamic Republic of)
- Ireland
- Israel
- Italy
- Jamaica
- Japan
- Kazakhstan
- Kenya
- Kyrgyzstan
- Lao People's Democratic Republic
- Latvia
- Lesotho
- Liberia
- Liechtenstein
- Lithuania
- Luxembourg
- Madagascar
- Malawi
- Malaysia
- Mauritius
- Mexico
- Monaco
- Mongolia
- Montenegro
- Morocco
- Mozambique
- Namibia
- Netherlands (Kingdom of the)
- New Zealand
- North Macedonia
- Norway
- Oman
- Pakistan
- Philippines
- Poland
- Portugal
- Qatar
- Republic of Korea (South Korea)
- Republic of Moldova
- Romania
- Russian Federation
- Rwanda
- Samoa
- San Marino
- Sao Tome and Principe
- Serbia
- Sierra Leone
- Singapore
- Slovakia
- Slovenia
- Spain
- Sudan
- Sweden
- Switzerland
- Syrian Arab Republic
- Tajikistan
- Thailand
- Trinidad and Tobago
- Tunisia
- Türkiye
- Turkmenistan
- Ukraine
- United Arab Emirates
- United Kingdom
- United States of America
- Uzbekistan
- Viet Nam
- Zambia
- Zimbabwe
Intergovernmental Organizations:
- African Intellectual Property Organization (OAPI)
- European Union
International Trademark Registration: A Step-by-Step Guide to the Madrid System (2025)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
