By: Bruce S. Londa
August 2003

As of November 2, 2003, the United States will formally become a member of the international trademark system known as the Madrid Protocol. The Protocol is a treaty that provides for an international procedure to obtain multi-national trademark protection and international registration by way of a centralized system. Now United States trademark owners, along with trademark owners from other member countries, may file an international trademark application based on their national applications, simultaneously allowing these applicants to enjoy the advantage of an early priority date, while cutting down on the costs traditionally associated with international trademark registration.

In order to obtain international registration pursuant to the Madrid Protocol, a U.S. applicant must first file a U.S. national application or have an existing U.S. trademark registration. Rather than filing separate national applications in each of the foreign countries of interest, the applicant may file a single international application, designating those countries. While the application is administered by the World Intellectual Property Organization (“WIPO”) in Switzerland, U.S. applicants may file their international application through the U.S. Patent and Trademark Office.

Once the formalities of the application are certified by WIPO, the application is forwarded to each of the designated national offices, where it will be examined under the registration and review procedures of those countries. A national office may require additional information or require the applicant to respond to office actions. In that case, the applicant would have to appoint a local attorney to correspond with the national office. However, as most countries do not engage in a rigorous examination, it is expected that the need for local counsel would be sharply reduced overall. Each country in which the applicant is seeking an extension of protection has eighteen months to review and reject the application. Failure to reject the application within this time will result in an extension of protection to the applicant, unless opposition proceedings have commenced, in which case, additional time may be provided.

The primary advantage of the Madrid Protocol to U.S. trademark owners is that it permits simultaneous registration in up to 57 foreign countries, by way of a single filing through the U.S. Patent and Trademark Office, in the English language, using U.S. currency, avoiding foreign attorney costs in most cases. Once the owner of the mark perfects the registration procedure under the Madrid Protocol, the registration initially is effective for ten years, and is renewable for further ten-year periods. Renewal is achieved by a single filing with WIPO and payment of a corresponding fee. Not only does the trademark owner renew international protection through this procedure, but national rights are renewed as well. Furthermore, any changes to the registration such as assignments or name changes may be made centrally in a single filing. Since the cost of retaining multiple foreign attorneys is avoided, the cost savings realized through the filing of a Madrid Protocol application can be substantial. Another advantage lies in the possibility to convert an existing foreign trademark registration portfolio into a single International Registration.

One drawback of the Madrid Protocol system, compared to obtaining discrete national registrations, is that, during the first five years, the International Registration is dependent upon the underlying U.S. national registration. Therefore, if the U.S. registration of the trademark is rejected or successfully opposed, or perhaps the coverage of goods is limited, the International Registration and all of the rights obtained in the member countries will be canceled or limited accordingly. It is also noted that while most member countries would not require actual use to proceed to registration, the U.S. application will not be approved for registration (in most cases) without actual use, and this may therefore delay or invalidate the International Registration. However, the Madrid Protocol does provide that the owner of such a mark may subsequently transform the international rights into corresponding national rights by instituting national filings within three months.

A further drawback of the Madrid Protocol is that the European Union is not a member apart from the individual European countries. Therefore, applicants cannot take advantage of a Community Trademark Registration (“CTM”), which will soon be expanded to cover 25 countries, by way of the Madrid Protocol. Rather, separate national registrations would have to be designated. An alternate approach, therefore, may be to file a separate CTM application, while using the Madrid Protocol for other national registrations.

It can be seen that there is now an opportunity for U.S. trademark owners to obtain foreign trademark registrations in a much more economic and simple fashion. However, in view of several important limitations, it may be that it is better to proceed either through regular national filings or through a combination of regular filings with an international filing. This latter option will continue to come into play in any event, since the current membership in the Madrid Protocol is not universal.

The trademark attorneys at Norris, McLaughlin & Marcus, P.A. are experienced in analyzing a mark in terms of international protection and can offer an individualized plan to suit the needs of each trademark owner. We can also review existing trademark portfolios to determine whether it would be beneficial to convert these into an International Registration.