A Little More About the Madrid Protocol
The Madrid Protocol has vastly simplified the international protection of trademarks. However, you should be aware of a few important nuisances when extending your rights under Madrid.
a. Filing Fees are Non-Refundable: As with a U.S. application, the government and/or organizational filing fees to extend your trademark under Madrid are non-refundable.
b. The 5-Year Rule: As mentioned above, you can extend protection of your U.S. application or registration. When doing so, however, for the first 5 years the extension relies on the continued existence of the underlying U.S. trademark. As such, if your U.S. trademark gets refused or otherwise becomes abandoned you will need to convert any extension under the Madrid Protocol into a direct application with that country’s intellectual property office. This is easy to do, however, additional costs will apply.
c. Examination by Foreign Trademark Offices: It should also be noted that just because you request an extension of your U.S. trademark it does not mean that you will automatically receive protection in the target countries. The respective foreign trademark offices, like the U.S., will also examine your request to determine if your trademark is entitled to protection in their country.