The Madrid Protocol is a multinational treaty that will provide United States-based companies an international alternative to local or regional trademark registration systems. The protocol will allow a trademark to be registered in all selected member countries as of the submission date of a single application in the local trademark office. Each country’s trademark office will then evaluate the application against other registered marks according to national standards. U.S. trademark owners can file applications pursuant to the Madrid Protocol beginning on November 3, 2003.

Although the Madrid Protocol does require that the mark be used in each country as governed by local use laws, there are several distinct advantages:

• Filing of a single application at the local trademark office;
• Submission in English;
• Lower filing and maintenance fees;
• An expedited registration process;
• A single registration number; and
• A single renewal date.

Nevertheless, in some instances it may still be more advantageous to register a mark in certain countries or regions through other means. For example, if the use of the mark will be limited to a specific geographic region, then registration with a regional registration system, such as the European Community Trademark, may be more cost-effective or better tailored to a company’s narrower geographic needs. Similarly, if the mark will be used differently in certain countries, may change over time, or is considered “weak,” individual national applications may be more appropriate.

Foreign Trademark Registration Options

When the United States joins the Madrid Protocol on November 3, 2003, U.S. entities seeking to register their trademarks will have three broad options for registering a trademark in a foreign country, namely, national, regional and the Madrid treaty systems (Madrid Protocol and/or Madrid Agreement). While the foreign national trademark rules have not changed, the introduction of a new mode of foreign registration provides companies seeking to do business internationally with a new option for protecting their trademarks.

Foreign national registration will continue according to local rules. Because the U.S. Patent and Trademark Office (USPTO) specificity requirements exceed those of most foreign countries, if a company desires a broader description of the goods or services identified by its registered mark than authorized by U.S. rules, direct filing with the target country may be the best option. Also, if registration is desired in only a few foreign locations, direct filing may be more cost-effective.

The Madrid Agreement & The European Community Trademark

Two existing regional systems, the Madrid Agreement and the European Community Trademark (CTM), will remain influential trademark registration systems. Although the United States is not a member of the Madrid Agreement and therefore U.S. companies will not be able to file trademark applications through the Madrid Agreement, that system will continue in effect because the Madrid Protocol does not supersede the Madrid Agreement. The Madrid Agreement is de facto regional because its members are located in Europe, Africa and Central Asia. The CTM is a truly regional trademark system encompassing solely European countries.

The Madrid Agreement began operation in 1891 and continues to be a viable trademark registration system. Countries which are parties to that treaty will operate under its terms when dealing with other members of the Agreement, even if such countries are also members of the Madrid Protocol.

The CTM is a regional system which includes coverage in several nations of the European Union. Other nations may seek coverage under the CTM if they have a bilateral treaty with the European Union or if they are members of the Paris Convention or the World Trade Organization (WTO). The trademark must be identical in all countries, and it may not be amended. Submissions may be made in English or French.

Under this system, opposition to the mark must be filed within three years of the application, and the mark need only be used in one member country to satisfy use requirements. The trademark is fully assignable and it automatically extends to all new members of the community, but if the application is successfully attacked by one member country, then the entire application fails and registration would have to proceed individually, if at all. Though trademark infringement is litigated in CTM courts, judgment may be enforced in all member nations.

The Madrid Protocol

In order to garner the bundle of national rights in other countries available under the Madrid Protocol, an application for International Registration is submitted in the home country. Therefore, every International Registration submitted through the U.S. will be subjected to the rules of the USPTO. This application lists the member countries to which the applicant desires protection to be extended. Though an International Registration certificate is given at the time of filing, this term is misleading because it is not an actual registration. It is really no more than a confirmation of receipt.

No changes will be made to the document, but the result of the examination process that occurs over the next 18 months confers enforceable rights on the owner of the International Registration. To be certain of the validity of the mark in member states, a certified copy of the registration showing the current status of the International Registration may be ordered from the World Intellectual Property Organization (WIPO).

Application Process

An International Registration under the Madrid Protocol can be filed by any national or legal entity having a real and effective industrial or commercial establishment in a member country. At the time of filing, the applicant simply designates other Madrid Protocol countries in which it desires coverage. These requests for extension may be made at any time. The requests for International Registration coverage are then sent to WIPO by the home country trademark office, and the separate designee countries are informed by WIPO of the request.

Countries will then have 18 months to examine the application in accordance with their own national standards. The application is considered filed as of the submission date in the home country, and that application date reaches all extensions simultaneously filed regardless of the date that the member country receives the application or begins the examination process, so long as the packet is complete when submitted. To facilitate forwarding the application to WIPO, the USPTO’s proposed rules require every application to be submitted electronically.

An applicant who is a “citizen” of a Madrid Protocol member country has two possible scenarios for obtaining International Registration coverage. First, the applicant may base the International Registration on an existing registration in its home country. This can be accomplished by filing an extension of International Registration coverage in its home country trademark office based on this national registration. Alternatively, the applicant could file a new application in the home country trademark office and ask for an extension of International Registration protection to other member countries at the same time. This extension of coverage must be for the same mark, the same goods and services, the same classes and the same owner as the home country application.

Because only one International Registration number exists per trademark, if the applicant needs to record a change of name, only one filing and one fee are required through the applicant’s home country trademark office. The International Registration also requires only one renewal, leading to savings on legal costs and filing fees.

The USPTO currently requires more specificity in goods and services descriptions compared to most other countries. As a result, protocol registrations based on United States applications and registrations will be narrower in scope than registrations obtained through foreign national trademark offices.

Expenses

The fees payable for an International Registration are: (i) the basic fee (which increases if the mark is in color or if the application for the mark includes more than three classes of goods/services); and (ii) the individual fee for each designated country (which increases where there is more the one class of goods/services). The current basic fee is $465 and there is a fee of $50 per additional class over the three covered classes. The individual fees for each designated country vary. Overall, it is projected that expenses for applications filed pursuant to the Madrid Protocol should be less than the filing fees for applications individually submitted to an equal number of foreign national offices.

Timing/Protection/Use

Though the examination period has an 18-month limit, it may be extended through five years for opposition purposes. The International Registration confers the same rights of protection to foreign and native applicants, and that protection lasts for 10 years. Unlike the CTM, which requires use in only one member state, the Madrid Protocol requires use in accordance with local law, which could mean use in every member country. The use requirement is not much of a drawback if trademark registration is sought with an eye toward immediate use, but this requirement will forestall acquisition of a trademark in anticipation of future use.

Vulnerability

The viability of the International Registration depends on the application or registration upon which it is based for the first five years following registration. If the home application is abandoned or the resulting registration is canceled, the International Registration becomes invalid. However, there is a three-month grace period in which the trademark owner may convert the International Registration into separate national applications in countries of choice. The national applications would retain the same filing date as the original International Registration.

Assignment of Rights

International Registrations are freely assignable to any third party that has an establishment in, domicile in, or the nationality of a country in the Madrid Protocol system. This can limit a holder’s ability to transfer rights in a mark. For example, no International Registration could be transferred to a party based solely in Canada or South Africa, as these are not member countries.

Litigation

It is unclear how trademark disputes will be litigated. One possibility is that the infringement will have to be litigated in the foreign court system of the country where the violation took place. Another possibility is to litigate in the United States, assuming jurisdictional issues could be satisfied, and then attempt to have the judgment honored in the court system of the country where the violation took place. The third possibility is a U.S. court might award damages for trademark violations in other countries.

Conclusion

The Madrid Protocol can be “one-stop shopping” for a global filing and maintenance program. For quick protection, simultaneous global protection, or locations with weak local representation, consideration should be given to using the Madrid Protocol. For protection of broader trademarks, local ownership of the mark, marks that anticipate change over time, or protection in nonmember countries, consideration should be given to using other registration schemes. It is important to analyze properly, with advice of counsel, the appropriate prosecution and protection strategy for your company’s trademarks.