Advantages of Protection Under the Madrid Protocol
By G. Roxanne Elings,
Maxine Retsky and
Elise Tenen-Aoki, Greenberg
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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
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.
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
For more information, please review our Intellectual Property Practice
description, or feel free to contact one of our attorneys.
This GT ALERT is issued for general purposes only and is not intended
to be construed or used as legal advice. Greenberg Traurig attorneys provide
practical, result-oriented strategies and solutions tailored to meet our
clients’ individual legal needs. The Firm’s responsive approach to client
service often cuts across legal subject matter, applying the right experience
and resources to provide cost-effective solutions.