Protecting a trademark internationally

Protecting a trademark internationally through the Madrid Protocol

The Madrid Protocol is controlled by the World Intellectual Property Organisation (WIPO), based in Geneva, Switzerland and over 90 countries are signed up to this agreement.

An International application must be based on an existing trademark application, or registration, in one of the member countries. If you apply through the UK office, your international application must be identical to your UK trade mark application or registration. You can file your International application at the same time as you make your UK application, or later if you wish.

If you file through WIPO at the same time as your UK/EU trademark application then it is important to remember that if your UK appication fails, so will your WIPO application.

If you have made an application for a CTM at OHIM, or have a registered CTM, you can use that as a basis for an international mark. However, you must then make the application for that mark through OHIM. The forms and fees are on OHIM’s website.

You can also use your UK trademark application to claim priority when applying for an international trademark provided this is within 6 months. This means that your later application will be treated as if you applied on the same date as in the UK.

If you'd like a quote for filing your trademark through WIPO please contact jane@trademarkroom.com