By Alberto Zacapa

The Madrid Protocol (“Protocol”) is one of two international treaties of the Madrid System or International Trademark System (“System”). The Protocol provides a cost-effective and efficient way of acquiring trademark protection in multiple countries. The Protocol allows an applicant to file one international application through a single office, in one language, with one set of fees in a single currency. Moreover, foreign associates or agents are not needed to assist in the filing process. If an application is approved, the World Intellectual Property Organization (“WIPO”) may grant international certificates of registration. While these international registrations do not offer protection in any specific country, they indicate approval for designated countries. It is up to each designated country to grant or refuse protection. If protection is granted in a country, the effect is the same as if the mark had been registered through that country’s trademark office. The benefits of the Protocol extend to simplified post-registration maintenance of a trademark registration. The Protocol provides one straightforward step to record any changes in name, ownership or address of either the representative or the holder of a mark. WIPO then transmits any request for protection, renewal and other documentation to all designated offices.

Countries in Latin America have long been hesitant to adopt the Protocol. Perhaps, this hesitancy stems from the possibility that its adoption would constitute a reduction in revenue from the trademark application process. Spanish was only introduced as a language of the Protocol in 2004. The language limitation had previously excluded the Spanish-speaking region. Nonetheless, membership has remained low among the Latin American countries. However, in early 2012, Colombia became the 87th member of the Madrid System. The benefits of having a streamlined system that works in parallel with the national trademark application process were recognized by Colombian Vice President Angelino Garzón, who led this transformation. The Protocol entered into force a few months later on August 29, 2012.

Continue Reading Madrid Protocol Membership Grows Among Latin American Nations

By James Stewart

In an exciting development for the international trademark field, the Thai Parliament has issued its approval to move forward with Thailand’s proposed admission to the Madrid Protocol. The Thai Parliament must now amend its trademark laws to conform with the Madrid Protocol. Thailand’s Trademark Office has drafted these amendments which are currently under review. Upon completion of the review period, these revisions must be approved by the legislature. This revision and approval process will take approximately six months.


Every quarter our team publishes an Intellectual Property and Technology newsletter, in which we regularly analyze and explore issues related to trademark, copyright and advertising law along with the other areas of IP.  Allyn Taylor, one of our partners, wrote an article for the last edition that we’d like to reshare.


Protecting your brand on a global scale

By Allyn Taylor

Back when products and services were sold via brick and mortar stores, only large corporations or conglomerates seriously considered seeking global protection for valued brand names. Now, however, in the age of the Internet and Cloud, goods and services can be delivered virtually anywhere. Seeking trademark protection on a global basis is often a logical option for even a small company. Yet the question inevitably arises: “How do I accomplish this in an efficient, cost-effective manner?”

Continue Reading Protecting Your Brand on a Global Scale