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GT Alert

The Madrid Protocol - Protecting U.S. Trademark Rights Around the World

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

Click for information on Adobe Acrobat.  View or download the PDF version of this Alert here.


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, 2003.

Roxanne Elings
"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 countries.

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 Protocol.

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 designated.

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.


Footnotes

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


Additional Information:

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.