Blog by Isabella Menta, Junior Associate 

Trademarks are an essential aspect of any business, large or small. A trademark distinguishes one’s goods from another’s, indicating the source of each product.[1] Essentially, trademarks are used to protect the identity of a brand or business and prevent consumer confusion when identifying that brand.[2] Typical trademarks include “any word, name, symbol, or device, or any combination thereof—(1) used by a person, or (2) which a person has a bona fide intention to use in commerce”.[3] Trademarks do not give the owner exclusive rights to a word or phrase.[4] Rather, the owner of a trademark only has the right to how that word or phrase is used in relation to their specific product.[5]

At the international level, business owners must ensure their trademark registration applies in each country where they seek protection.[6] To do this, owners have several options, including filing a “trademark application with the trademark office of each country,”[7] or utilizing the World Intellectual Property Organization’s “Madrid System”.[8] Rather than going through the hassle and cost of applying in each country where they seek trademark protection, WIPO’s Madrid System offers an easier, more time efficient application process. The WIPO’s Madrid System allows business owners to file a single international application, pay a single set of fees for that application, and recover protection in up to 131 countries.[9] This system provides a “convenient and cost-effective solution” for business owners seeking to protect their trademark worldwide.[10]

To qualify under the Madrid System, the business owner must be “a national of – or have a domicile or business in – any of the 131 countries covered”.[11] If this element is met, the business owner will then be charged fees in order to complete their application.[12] Typically, these fees include a “basic fee” and any “additional fees” depending on the location(s) in which they want their trademark protected.[13] While this is only a basic overview of WIPO’s Madrid System, if a business owner applies and is approved, they receive efficient international trademark protection. Branding is a vital aspect of a successful business, and ensuring that branding is protected, clear, and identifiable is an essential benefit of WIPO’s Madrid System.

 

[1] 15 U.S.C. § 1127

[2] What is a Trademark?, U.S. Patent & Trademark Office, https://www.uspto.gov/trademarks/basics/what-trademark#:~:text=A%20trademark%20can%20be%20any,guard%20against%20counterfeiting%20and%20fraud     (last visited Jan. 28, 2025).

[3] supra note 1.

[4] supra note 2.

[5] Id.

[6] World Intellectual Property Organization, U.N. Doc. A/RES/3346 (Dec. 17, 1974).

[7] Id.

[8] Id.

[9] The Madrid System, World Intellectual Property Organization, https://www.wipo.int/en/web/madrid-system (last visited Jan. 28, 2025).

[10] Id.

[11] Id.

[12] Id.

[13] Id.