GT Alert

Advantages of Protection Under the Madrid Protocol

February 2003
By G. Roxanne Elings, Maxine Retsky and Elise Tenen-Aoki, Greenberg Traurig

  View or download the PDF version of this Alert here.

On November 2, 2002, President Bush signed into law legislation implementing the long-awaited Madrid Protocol, a treaty that provides an international system of registering trademarks, and is administered by the World Intellectual Property Organization (WIPO).

"United States trademark owners will be able to take advantage of this cost-saving method of securing broad trademark protection around the world."

The effective date for the legislation is one year after enactment and as such the United States Trademark Office is shooting for November 2, 2003 as the date to start accepting Madrid applications. At that time, United States trademark owners will be able to take advantage of this cost-saving method of securing broad trademark protection around the world.

There are presently over 70 member countries of the Protocol including Australia, China, Japan, Singapore, Korea and most European countries. Countries who are not presently members include Canada and many Latin American countries.

How This Affects You

Companies look to expand by penetrating established markets and by creating new markets for their products. Marketing the same product under different trade marks in different countries is inefficient and costly in terms of promotion, advertising and packaging. In addition, in this growing international economy, it is vital to protect important brands in countries where goods and services may be exported, manufactured under license or counterfeited.

The accession by the United States to the Madrid Protocol will enable United States-based trademark owners to extend their protection — with greater ease and less cost — to (presently) as many as 70 countries.

The Madrid Protocol does not displace the United States’ or any other country’s current trademark registration system. Rather, the Protocol allows trademark owners to file a single application in their home country, called a “basic” registration, and then designate extension of the application or registration to some or all of the member countries at a reduced fee.

The national trademark office of each elected country has a 12-month period in which to issue an initial refusal, which may be extended up to 18 months (or longer if an opposition is filed). If the national trademark office does not act within this allotted time period, the International Registration will take effect in that country. International Registrations have the same force and effect as national registrations.

Once an International Registration is established, and if the International Registration is for the same mark and goods and/or services included in an existing national registration, the trademark owner can request that the national registration be replaced. While the exact procedure in the United States has yet to be set by the Trademark Office, most likely the replacement International Registration will get the earlier priority date for the goods and/or services covered by the national registration, but the basic trade mark and the international registration will remain as separate entities. The most significant advantage of replacement is that it will streamline the renewal and maintenance activities. See below.

We have identified the following benefits and caveats of filing for International Registration under the Madrid Protocol:

Reduced Application Expense: Madrid Protocol applicants pay a single fee based upon the number of countries to be covered by the registration. While the cost savings will depend upon the fee structure adopted by the jurisdictions selected, it is generally agreed that the fees will represent a significant cost savings when compared to the filing and issuance fees charged for national applications and registrations. Additionally, United States trademark owners now will be able to prosecute international applications through a single agent rather than engaging local agents in each country, unless an office action is received in a particular country. For trademark owners used to using the Community Trade Mark application system, they will be pleased to learn that, unlike the Community system whereby a prior right in any one country caused the entire application to fail, in the Protocol system, a prior right in one country only affects the protection of the mark in that country.

CAVEAT: It will be necessary to search the international register for potential conflicting rights. Applicants should search and clear a mark through local counsel in each country where the mark is intended to be registered to identify and address potential problems before investing in filing and prosecution costs.

CAVEAT: The United States Trademark Office currently requires more narrow specificity in goods and services descriptions compared to many other countries. As such, Protocol registrations based on United States applications and registrations will be narrower than either the scope of Protocol registrations based on other countries’ laws or registrations that could be obtained by filing applications directly with national trademark offices with a broader description. Trademark owners should undertake a cost-benefit analysis — at least for their most important brands — of whether the national filing system or the Madrid Protocol system is the most advantageous.

CAVEAT: Protocol Registrations having a United States application or registration as a base, are wholly dependent upon that application or registration for a five-year period. Therefore, if the base application or registration is refused or otherwise lapses or if the registration is cancelled within this five year period, the action will extend automatically to the International Registration. There is, however, an important proviso to this in that, if an international registration is cancelled on this basis, the owner will be entitled to file national applications in all the countries covered by the international registration and retain the date of the international registration. In order to retain the filing date, it will be necessary to convert the cancelled international registration to national applications within three months of the cancellation.

Reduced Registrations to Track: Under the Protocol, registrants have one registration to track for multiple jurisdictions, with a single registration number and renewal date.

CAVEAT: International registrations cannot be amended after registration. Also, for trademark owners who have used the popular Community Trade Mark registration system for its European coverage, the main advantage of a Community Trade Mark registration is that use of the mark in any part of the European Union is sufficient to preserve the registration. A company which protects its mark in a number of countries through the Protocol, however, will need to use its mark in each country to preserve the international registration in that country.

Reduced Post-Registration Expense: If a Protocol mark is assigned or if the trademark owner changes its name or address, only one filing is needed to record the assignment or change of name, regardless of the number of countries where the mark is protected.

CAVEAT: While Protocol registrations may be assigned in their entirety or in part by designated country, they may only be assigned to parties domiciled or established in a country that is also a member of the Madrid Protocol. Currently, this will limit assignments to Canadian and many Latin American countries which are not members of the Protocol.

Right To Expand: Once the United States joins the Protocol, trademark owners outside the United States can extend protection to the United States through existing international registrations. As other countries join the Protocol, owners of International Registrations can designate those additional countries, upon payment of additional required fees.

CAVEAT: The registration in that country will have priority from the date of election only, and will expire ten years from the date of the original International Registration.

No Translation Necessary: An application under the Protocol may be filed and prosecuted in English or French; thus, translations into the local language of the designated country will not be required. Owners will save time, money and potential problems that may arise with the translation of unique terms.

Conclusion

The Madrid Protocol provides an effective and well-established means of obtaining multiple foreign trademark registrations at less cost. Understanding the system and its limitations, however, is crucial to developing the best strategy for the international registration of important marks.

© 2003 Greenberg Traurig

Additional Information:

For more information, please review our Intellectual Property Practice description, or feel free to contact one of our attorneys.

• Intellectual Property Practice Area
• Intellectual Property Attorneys