The U.S. is a party to a number of intellectual property (IP) treaties. These treaties help IP owners in the U.S. protect rights internationally, and help foreign IP owners to protect rights in the U.S.
One of these treaties is the Madrid System for the International Registration of Marks (Madrid System). The Madrid System facilitates international trademark protection in numerous countries by providing a system for a trademark owner to obtain an international registration that has effect in each of the designated Contracting Parties who are members of the Madrid Union. The Madrid System is governed by the Madrid Agreement and the Protocol relating to that Agreement (Madrid Protocol).
The Madrid Union is made up of Contracting Parties to the Madrid Agreement and the Madrid Protocol. As of July 2, 2019, the Madrid Union includes 105 members (Contracting Parties), covering 121 countries. These members represent more than 80% of world trade, with potential for expansion as membership continues to grow. Two countries recently joined the Madrid Union this year, and a third country is scheduled to join later this year.
Brazil recently acceded to the Madrid Protocol by filing an instrument of adherence with the World Intellectual Property Organization (WIPO) in Geneva, Switzerland on July 2, 2019. The treaty is expected to be enforced in Brazil effective October 2, 2019.
Canada acceded to the Madrid Protocol on March 2019, and became a member of the Madrid Union effective June 17, 2019.
Samoa acceded to the Madrid Protocol on December 4, 2018, and became a member of the Madrid Union effective March 4, 2019.
Brand owners should be aware that many or most foreign countries have first-to-file trademark regimes that may benefit the party who wins the race to file and penalize trademark owners who delay filing. Brand owners should consult with an experienced trademark attorney regarding available options and strategies to protect valuable trademarks and other IP assets in the U.S. and internationally.
The Intellectual Property Practice Group at Beggs & Lane assists clients worldwide with U.S. and international trademark, copyright, and other IP matters, including clearance, registration, licensing, assignment, portfolio management, customs and border protection, enforcement, litigation, and alternative dispute resolution (ADR).