International Trademark Registrations -- The Madrid Protocol

November 2, 2003 will mark the beginning of some significant changes to trademark law and practice in the United States. This year, the United States became a signatory to the Madrid Protocol, which is a long-established international trademark filing and registration system. Beginning November 2nd, U.S. trademark owners will be able to extend protection for marks that are subjects of U.S. applications and registrations to as many as 57 other countries by filing a single application. The Madrid Protocol may not be for everyone, but it may be an excellent mechanism for U.S. mark owners to obtain international protection of marks at a cost significantly less than pursuing protection in individual countries.

What is the Madrid Protocol?

The Madrid Protocol is a treaty that provides a mechanism for obtaining trademark protection in multiple countries and maintaining international registrations through a centralized system. Rather than filing individual applications in each country, the Madrid Protocol will allow trademark owners to extend their U.S. applications or registrations to any of the other 57 member countries.

The current member countries of the Madrid Protocol include Antigua, Barbuda, Armenia, Australia, Austria, Belarus, Belgium, Bhutan, Bulgaria, China, Cuba, Czech Republic, Democratic People’s Republic of Korea, Denmark, Estonia, Finland, France, Georgia, Germany, Greece, Hungary, Iceland, Ireland, Italy, Japan, Kenya, Latvia, Lesotho, Liechtenstein, Lithuania, Luxembourg, Macedonia, Moldova, Monaco, Mongolia, Morocco, Mozambique, Netherlands, Norway, Poland, Portugal, Republic of Korea, Romania, Russian Federation, Serbia and Montenegro (Yugoslavia), Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Swaziland, Sweden, Switzerland, Turkey, and Turkmenistan. Canada and Mexico currently are not members of the Madrid Protocol.

What are the primary benefits of the Madrid Protocol?

U.S. trademark owners will be able to file a single, international application through the United States Patent and Trademark Office based upon an existing U.S. application or registration and extend the international application to any or all of the other member countries. The application can be filed in English and the filing fees are payable in U.S. dollars. All filings must be made electronically. At the time of filing, applicants do not need to retain local counsel in any of the countries to which the application extends; however, if the application is rejected in any of the chosen countries during the examination process, local counsel will be required.

Because there is only a single application involved, trademark owners can achieve significant cost savings at the initial filing stage. As an example, the filing fees for a Madrid international application extended to Austria, China, France, Germany, Japan, Russia, Sweden, and the United Kingdom would total about $5,000. The filing fees for filing separate applications in each of these same countries would total approximately $12,000. In addition to the procedural ease of filing a single application, there will be cost savings for renewals, assignments, name/address changes, and other maintenance activities because only a single filing will have to made.

However, the applications will still have to be examined by each country’s trademark office. Thus, while there is an initial cost savings in filing fees, it is difficult to assess the costs involved in getting the application approved for registration in each country, although prosecution fees in each country will probably remain about the same as they would be in a separate national filing. Also, the application will be subject to other costs that country would otherwise impose, including publication and registration fees.

Important considerations

Dependence—To extend protection to member countries, an individual or business must first own a U.S. trademark application or registration. This is referred to as the “basic” application or registration. For its first 5 years, the international registration is dependent upon the U.S. trademark application or registration on which it is based. Therefore, applicants must be cautious when basing international applications on marks filed in the U.S. that could be difficult to register (e.g., descriptive, generic, or suggestive marks, or marks that conflict with other’s rights). If the U.S. application or registration is abandoned or canceled during the 5 year period, all rights obtained in selected member countries will be lost.

If the U.S. application or registration does abandon or is cancelled, the applicant may transform the international registration into corresponding separate country applications (with the same priority as the failed Madrid registration). However, this process requires the assistance of foreign counsel and could become expensive. Therefore, it is important that applicants consider the strength of the underlying application or registration before filing the international application.

Scope of goods or services—Relative to other countries, the U.S. generally requires a fairly narrow description of goods or services in registrations. Because of the dependence of the Madrid application on the U.S. application or registration, the goods and services in a Madrid application will likewise be limited. Accordingly, it might be possible to receive a broader scope of protection in a given mark through a direct country application for registration as compared to a Madrid application based upon a U.S. registration.

Is foreign availability and conflict searching necessary?

Although the Madrid Protocol makes it relatively simple to extend applications to multiple countries, availability and conflict searching is still critical. Some countries will register marks without checking for conflicts. Accordingly, registering a mark in a foreign country does not guarantee that there is not a senior user of the mark, and does not necessarily protect against a claim of infringement. Therefore, the investment in the international registration could be lost if the applicant relies on the international registration without first checking for conflicts before use of the mark in that country.

Is the Madrid Protocol right for you?

The Madrid Protocol provides an excellent opportunity for U.S. companies to obtain cost-effective protection in countries they might not otherwise have considered. An overall cost comparison with individual country filings, taking into consideration the countries of interest and the scope of protection desired, will be necessary in order to determine whether an overall cost savings will result. The Madrid Protocol does have certain limitations (discussed above) which might make individual country filings preferable in some situations.

For more information, please contact any of the following trademark attorneys at Porter Wright: Karen K. Hammond, 614- 227-2182, ; Leslie K. Batté 614-227-2157; ; Robert J. Morgan 614-227-2186, .

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