The Madrid Protocol - Protecting U.S. Trademark Rights Around the World
By G. Roxanne Elings,
Maxine Retsky, and
Elise Tenen-Aoki, Greenberg
View or download the PDF version of this Alert
The United States completed the formal process for joining the Madrid
Protocol — a treaty that facilitates the protection of U.S. trademark rights
throughout the world — on August 2nd when it deposited the accession document,
signed by President Bush, with the World Intellectual Property Organization.
The United States Patent and Trademark Office (USPTO) has stated that it
will begin accepting filings under the Madrid Protocol as of November 2,
|"Participation in this international
filing system will enable owners of U.S. trademark applications
or registrations to request extensions of their trademark rights
to numerous foreign jurisdictions through a single application."
The United States participation in this international filing system will
enable owners of U.S. trademark applications or registrations to request
extensions of their trademark rights to numerous foreign jurisdictions through
a single English language application filed with the USPTO. A single filing
fee, payable in U.S. currency, will be calculated based on the number of
classes and countries covered by the application. Likewise, non-U.S. applicants
from member states will be able to request an extension of a registration
under the Madrid Protocol ("International Registration") to the United States
through their National Trademark Office. As of November 2, 2003, it is expected
that there will be 58 states and intergovernmental organizations within
the Madrid Protocol system, including most European countries, Australia,
Japan, China and the Russian Federation. The European Union is not currently
a member of the Madrid Protocol. Neither is Canada or most South American
In February of 2003, we sent out an alert setting forth certain advantages
of protection under the Madrid Protocol. In this alert, we would like to
address the practical considerations facing a United States person or entity
filing for an International Registration.
Who can file for an International Registration?
As of November 2, 2002, any person or entity who has a real and effective
industrial or commercial establishment or a domicile in, or who is a national
of a Madrid Protocol member country, which will as of November 2 include
the United States, and who has a recent pending application or a registration
for the same mark and same (or narrower description of) goods or services
as in the application for International Registration.
What countries will be protected by the International Registration?
An International Registration can be obtained in any country (other than
the United States, if based upon a U.S. application/registration) which
is also a party to the Madrid Protocol (currently as many as 58 countries.
The countries where protection is sought must be listed in the application
and the fees for that country must be paid. Additional countries can be
designated at any time, provided they are party to the Protocol at the time
of the designation and the requisite fee is paid.
How is protection obtained?
Protection is obtained in the designated countries, if after 18 months
from filing for the International Registration, the trademark office in
that designated country has not issued a refusal of protection under the
Madrid Protocol. A designated country may issue a refusal on any grounds
on which the application could have been refused had it been filed directly
with that country. Applicants will have the right to contest a refusal as
if they had applied directly with the refusing office. Protection under
the International registration can be geographically broadened at any time
by designating additional countries as long as they are party to the Madrid
How does the process work?
All applications for International Registrations must be filed electronically
with the USPTO.
- The USPTO certifies that the application conforms with the U.S. application
or registration upon which it is based.
- Within two (2) months of the filing date, the USPTO forwards the application
to the International Bureau in Geneva, Switzerland and sends a confirmation
notice to the applicant.
- The International Bureau in Geneva reviews the application for formalities.
If there are deficiencies in the application, the Bureau advises the applicant
who then has three (3) months to cure the deficiency. If not cured before
the deadline, the application is abandoned.
- If the application is in compliance or if the applicant has timely
cured any deficiencies, the Bureau registers the mark and forwards the
application to each designated country.
- Each designated country reviews as per its own national standards.
If a designated country issues a refusal, the application is not valid
in that country unless the deficiency is cured. If the designated country
accepts or does nothing within 12 to 18 months, the application will extend
to that designated country.
How long is the International Registration in effect?
For a period of ten (10) years from the date of the International Registration
(which is generally the date the original application is received by the
home office) and is renewable for subsequent periods of twenty (20) years,
provided a fee is paid every ten (10) years. If within five years of registration
of the International Registration, the underlying registration (which was
the basis for the International Registration) is cancelled, the International
Registration will be cancelled as well. The Registrant may, however, convert
its rights on a country-by-country basis without losing the benefit of the
original filing date. After five years the International Registration is
completely independent of the underlying registration, and will remain enforceable
even if the basic registration is cancelled. Any countries designated after
Registration will be in effect only for the duration of the ten year period
for that Registration.
What are the fees for filing an International Registration?
In sum, the fees payable for an International application are: (1) the
basic fee (increases where the mark is in color and for applications covering
in excess of three classes of goods/services); (2) individual fee for each
designated country (increases where there is more than one class of goods/services
or where the mark is a collective mark) or a complementary fee for each
designated country where there is no individual fee.1
The current basic fee is 653 CHF (US$465) where the mark is not in color
and 903 CHF (US$640) where the mark is in color. Additional fees per classes
over three (3) is 73 CHF (US$50). The individual fees for each designated
country varies and while the fees have not yet been calculated for International
applications filed in the United States, it is reasonable to assume that
the government filing fees for a trademark in one class of goods/services
will be approximately $7,000 - $8,000 if all Madrid Protocol countries are
Is there a cost savings to filing an International Registration?
The centralized nature of the international filing system promises considerable
benefits in convenience and cost over the filing of separate, national applications.
Yet, while the Madrid Protocol is expected to reduce a U.S. applicant’s
initial application expenses (the fees for each designated country will
be less than if filed directly with that country and foreign counsel is
not needed for the original filing), foreign counsel may likely be necessary
during the examination stage (if there is a refusal) and search and clearance
costs are expected to increase. Trademark owners with limited interest in
protecting their marks outside their own countries may find the Protocol
more expensive than filing nationally.
Are there any procedural benefits to filing an International Registration?
Yes. An applicant need not engage local counsel unless an Office Action
is issued by that country’s national Trademark Office. Renewals, assignment
recordals and changes of name and/or address may be effected through a single
filing with the World Intellectual Property Organization
(WIPO). Finally, the stringent time limit set under the Madrid Protocol
for review by national Trademark Offices may significantly accelerate registration
in countries where the review process normally takes several years.
Are there any procedural drawbacks to filing an International Registration?
Are there any procedural drawbacks to filing an International Registration?
(a) Because the scope of coverage of an International registration may
not exceed that of the basic application or registration and given the high
degree of specificity for goods and services required by the USPTO, a decision
to use the Madrid Protocol based on a U.S. application or registration will
have to be weighed against the possibility of obtaining broader protection
through an application filed directly with a national Trademark Office.
(b) If the basic (U.S.) application fails or the registration is cancelled
within 5 years, the International registration will be cancelled. One can,
however, save the priority filing date by converting the application or
registration to the individual designated countries. (c) An International
registration can only be transferred to a third party who is a member of
the Madrid Protocol. This may mean a transferee company outside the Protocol
will need to create a subsidiary which qualifies as a member of the Protocol
if it wants to benefit fully from the trademark rights acquired. (d) Because
of the international reach of trademarks, a clearance search will need to
cover at the very least the WIPO database, in addition to the U.S. Federal
and State databases. This is even true for companies seeking clearance and
registration only in the United States.
In sum, the Madrid Protocol can be a time saving and cost effective tool,
if used properly; however, each company’s brand and business circumstances
are unique and may be better served by national registrations or a combination
of national registrations and International registrations. We at Greenberg
Traurig look forward to meeting with you to determine what may be in your
company’s best interests.
1 It may not be higher than the fee which the
Office of the Designated Country would receive for registering that mark
for a period of 10 years, or for the renewal of such registration for a
period of ten years, after deduction of the savings resulting from the international
procedure. Such savings are expected to accrue, because, for example, the
international procedure spares the Offices of Contracting Parties formality
examination, the classification of goods and services, or publication of
the internationally registered mark.
© 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.