Protecting Trademarks Abroad: Madrid System vs. National Filing Directly in Foreign Jurisdiction

Description

Registration may be necessary or advisable to protect a trademark outside the U.S. The question often facing trademark owners is where and how to file. Trademark owners doing business outside the U.S. should consider differences in how other countries govern and administer IP rights.

The Madrid System provides a mechanism by which trademark applicants can seek protection in all Madrid System countries (almost 100 contracting parties). However, while there are some benefits, such as cost savings and multi-class registrations in countries which only allow single class applications, counsel must also be aware of the disadvantages and risks.

Risks include limitations on the identification of goods and a five-year dependency period (period of uncertainty), which may make filing directly in individual jurisdictions the better option.

After identifying each country in play, applicants must weigh the advantages and disadvantages of filing under the Madrid System as opposed to filing directly in foreign jurisdictions.

Listen as our authoritative panel examines the pros and cons of the Madrid System vs. filing directly in the foreign jurisdiction(s). The panel will explore the factors that U.S. trademark applicants must consider when determining where to file and will offer guidance on how to file.