International Trademark Protection: Madrid Protocol
By Kenneth Southall, JoAnn Holmes, and Segeda Ranjeet[1]
As of November 2, 2003, U.S. trademark owners who wish to protect their marks in foreign countries now have an additional option for acquiring trademark protection in countries that have adopted The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”). Prior practice generally required that, with the exception of a few community based schemes such as the European Union’s Community Trade Mark system or the African Union Trade Mark system, trademark owners had to file separate trademark applications in each of the countries in which trademark protection was sought. The long-awaited U.S. accession to the Madrid Protocol, however, now allows U.S. trademarks owners to register their trademarks in all of the 62 signatory countries by filing a single application with the United States Patent and Trademark Office (“USPTO”) for one fee. In addition, applications filed under the Madrid Protocol may be filed in either English or French. As such, filing under the Madrid Protocol eliminates the need for U.S. trademark owners to comply with the cumbersome language translation requirements of many foreign trademark offices. Current signatories to the Madrid Protocol include the United Kingdom and most other European nations, as well as China, Japan, and Singapore.
What Is the Madrid Protocol And What Does It Do?
The Madrid Protocol is actually one of two treaties that make up the Madrid System. The Madrid System, which allows for international registrations, is administered by the World Intellectual Property Organization’s (“WIPO”) International Bureau (the “IB”) located in Geneva, Switzerland. An application for international registration must be presented to the IB through the local trademark office of the applicant’s home country. A home country is defined as the place where the applicant is domiciled, is a national, or has a real and effective business presence. The IB cannot accept an application which is filed directly by the mark’s owner or its representative. The USPTO began accepting applications for international registrations under the Madrid Protocol on November 2, 2003.Although use of the Madrid Protocol may result in a reduction of duplicative foreign filings and minimize filing costs for international trademark protection, it does not change substantive trademark law, either in the U.S. or in other countries. Hence, U.S. trademark owners applying for foreign trademark protection still need local counsel to assist in prosecuting applications in foreign jurisdictions. First, foreign counsel’s assistance is required to conduct thorough trademark clearance searches to identify marks which could impede registration in the local jurisdiction. Next, foreign counsel’s assistance may be necessary should an application be challenged, whether by trademark authorities or by third parties. Further, because each country maintains its local mandates for trademark assignment and licensing, local counsel is necessary to assist in navigating foreign trademark transfer requirements.
Who Can Claim the Benefit of the Madrid Protocol?
Under the Madrid Agreement, only the owner of a valid registration can apply for an international registration. However, pursuant to new rules, citizens or legal entities of member countries that own a trademark registration or application in their home country can apply for an international registration before WIPO’s International Bureau.What Are the Filing Procedures for U.S. Applicants with the USPTO?
The USPTO regulations that implement Madrid Protocol filings were finalized on September 26, 2003. Since November 2, 2003, the owner of a U.S. application or registration may apply for protection of its mark in any of the 62 member countries by submitting a single international application to the IB through the USPTO. Under the rules initially promulgated by the USPTO, all applications for international registration were required to be filed electronically through TEAS, the USPTO’s trademark electronic filing system. On October 22, 2003, however, the USPTO announced that it would postpone the effect of the “electronic-filing only” rule until January 4, 2004, allowing U.S. trademark owners the option to file electronic or paper applications for international registration. After January 4, 2004, the USPTO will accept only electronically filed applications for international registrations.
To qualify for an international registration under the Madrid Protocol, the U.S. applicant must be the owner of a U.S. federal trademark application or registration. The international application must be for the exact same mark as the subject U.S. application or registration. In addition, the goods or services listed in an international application must be the same or narrower in scope than those listed in the U.S. application or registration. Lastly, the application for an international registration must include a designation for extension of protection to at least one member country.
The USPTO examines and verifies the information listed in the international application for accuracy and then forwards it on to the IB. The IB reviews the application to determine whether the filing regulations of the Madrid Protocol have been met and whether the required fees have been paid. If the requirements have been met and the proper fees have been paid, the IB immediately issues a registration for the mark, publishes the mark in the WIPO Gazette of International Marks, sends a certificate to the owner, and then forwards the filing particulars on to the local trademark offices of the designated member countries for prosecution. If the Madrid Protocol requirements have not been met, the IB notifies the USPTO and the applicant of the “irregularity” and specifies the time period within which the irregularities should be corrected.
The owner of an international registration may request an extension of protection in additional member countries in a subsequent filing. Each member country designated in an original application or subsequent filing examines the application as if it were a national application in accordance with its national laws. If the application meets the requirements for registration under such national laws, the member country grants registration of the mark in that country. If the international application fails to meet the requirements for registration, the designated country must notify the IB of the refusal within twelve or eighteen months, depending on the time limits set forth in that country’s declaration adopting the Madrid Protocol. In the event of such a refusal, the application must then be defended and prosecuted according to local laws and procedures, which , as noted earlier, requires the assistance of local trademark counsel. If a notification of refusal is not sent to the IB within either the twelve, or eighteen month period as set forth in the particular country’s declaration adopting the Madrid Protocol, the designated country must grant protection for the mark.
How Much Does an International Application Cost?
The USPTO charges a fee for reviewing and certifying an international application. The fee for certifying an international application based on a single “base” application or registration is $100.00 per class. The fee for certifying and reviewing an international application based on multiple base applications or registrations is $150.00 per class. These fees must be paid in U.S. dollars at the time of filing of an international application. In addition to fees required by the USPTO, there is a “basic” international processing fee which may be paid directly to the IB or through the USPTO as well as a “complimentary fee” to be paid for each member country designated. The basic fee is 653 Swiss francs (US $496.00) for up to three classes for a non-color mark or 903 Swiss francs (US$686.00) for up to three classes for a color mark. There is an additional “supplementary fee” of 73 Swiss francs (US$55.00) for each additional class covered by an application. The complimentary fee is 73 Swiss francs (US$55.00) for each member country designated. If the applicant pays these fees through the USPTO, the fees must be paid in US dollars at the time of filing. If the applicant pays these fees to the IB, the fees must be paid in Swiss francs. Lastly, some member countries also charge an additional “Individual fee” for processing the application. This fee will vary according to the jurisdiction. A fee schedule and calculator as well as instructions for acceptable payment methods and procedures for the IP may be found at: http://www.wipo.int/madrid/en/.What Is the Duration of an International Registration?
An international registration remains in effect for 10 years. It may be renewed for additional 10 year periods by paying the requisite fee to the IB. However, local proof-of-use and other registration maintenance requirements for each designated country must be observed and filed with the local trademark office of that country.What Are the Post-Registration Vulnerabilities of an International Registration?
An international registration remains dependent on its base country application or registration during the first five years after registration. If, during this period, the base application or registration is abandoned, rejected, cancelled or invalidated, whether in whole or in part, the international registration and all of its extensions in each designated country is likewise affected. This is termed a “central attack.” In the case of such a central attack, the Madrid Protocol allows the owner of an affected trademark to file replacement applications directly with the local trademark offices of the designated countries within three months and still claim the benefit of the original priority date of the international registration.What Are the Disadvantages to U.S. Trademark Owners Seeking International Registrations?
Although the Madrid Protocol may prove advantageous to many U.S. trademark owners who wish to obtain registration in multiple foreign countries, the USPTO’s restrictive approach regarding the specification of goods and services in U.S. applications, as well as U.S. requirements for commercial use of a mark prior to its registration, are drawbacks for U.S. trademark owners. This is because in most other countries, a trademark registration may simply state that it covers all the goods in a particular classification, whereas a U.S. applicant must specify each good or service. Moreover, foreign trademark offices generally do not require applicants to prove actual commercial use of a mark prior to its registration. Given the foregoing, U.S. trademark owners work at a disadvantage in relation to foreign trademark owners who may obtain international registrations and individual national registrations for a broad class of goods or services, often without having to actually use their marks for any of the goods or services covered by those registrations. To remedy this disadvantage, it may be strategically advisable for U.S. trademark owners to first file for trademark protection in countries with more liberal trademark registration laws than those governing the USPTO, provided that they can claim such a foreign country as their home country. Again, a home country is defined as the place where the applicant is domiciled, is a national, or has a real and effective business presence.In addition, assignment and licensing agreements also pose potential hazards for U.S. trademark owners when utilizing the Madrid Protocol. Although it is possible to record an assignment or transfer of an international registration and the related national registrations, the validity of such assignments or transfers are still governed by the local laws of each member country. In particular, issues of assignment with goodwill, payment of transfer taxes, and other requirements., must all be satisfied under the relevant local laws and failure to observe these requirements may render the assignment or transfer invalid in such jurisdictions. Furthermore, an international registration may only be assigned to parties who are themselves eligible for protection under the Madrid Protocol in the local jurisdiction. This means that the receiving party must be domiciled in, or a national of, the jurisdiction, or must have a real and effective commercial presence in the jurisdiction. Accordingly, if a U.S. trademark owner also owns an international registration and wishes to sell, transfer or assign its mark to a party who is not eligible for protection under the Madrid Protocol, the validity of such an assignment or transfer may be in question. This creates challenges for structuring transactions and may severely limit the value of the intellectual property portfolio being sold.
Conclusion
The Madrid System advances the global business community by creating a unified process for trademark owners from member states to obtain trademark protection in multiple foreign jurisdictions with a single application. However, because diverse local laws and custom still govern the process and requirements for prosecution of trademark applications, as well as registration maintenance, assignment and licensing, the need for specialized knowledge in this area remains essential. Hence, navigating the international trademark registration process still requires specialized experience and careful guidance.[1] Kenneth Southall is a Partner and JoAnn Holmes and Segeda Ranjeet are Associates in the Atlanta, Georgia office of Troutman Sanders LLP, a full service international law firm with offices in Atlanta, Washington D.C., Richmond, VA, Raleigh, NC, Hong Kong, London and several other cities. The authors specialize in Intellectual Property law and can be contacted at (404) 885-3000. This article is intended for informational purposes only and is not designed to render legal advice or a legal opinion. Such advice may only be given when related to actual fact situations.
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