January 12, 2003
Intellectual Property Alerts

U.S. Joins Madrid Protocol – New Options for Every New TM
by Cyrus Wadia

Earlier this month, the United States joined the Madrid Protocol – an international trademark application treaty that allows trademark holders in member countries to file for trademark protection in any other member country throughout the world with only one application. How does that affect you?

Life Before Madrid

Trademark registration has always been territorial. Up until now, if a U.S. company wanted to protect its trademark outside the U.S., it had to file individual applications in each country in which it wanted to do business and employ attorneys or agents in those countries to handle the process. Each of those individual applications was then examined under that country's standard trademark procedures, a relatively expensive and time-consuming process with uncertain results.

Life After Madrid

The Madrid Protocol changes all this. A U.S. applicant can now file one application in the U.S. Patent and Trademark Office (PTO) that will establish international trademark rights in a wide range of member countries, including most European countries, some African countries, Australia, China, Cuba, Japan, North and South Korea, Iceland and Turkey. It is expected that the European Union will soon become a party to the Protocol as well.

Instead of having to pay filing fees in each member country's currency, an applicant pays one basic filing fee (approximately $500) in its home currency, and an additional fee for each country in which the applicant files for a trademark. It is no longer necessary initially to engage lawyers or trademark agents in foreign countries, or comply with unique local rules.

At the time you file a Madrid Protocol application, you can decide with to seek registration of the mark in all or some of the member countries, simply by checking a box on the form. By opting for registration in any member country, you make a record of your claim of right to your mark in any member country you choose.

After a Madrid Protocol applica tion is filed in the USPTO , it is forwarded to the World Intellectual Property Organization (WIPO) Bureau. WIPO examines the application to ensure that basic formalities are met, issues an international registration and certificate, publishes the mark in WIPO Gazette (similar to the U.S. Trademark Gazette), and then forwards the registration to the member countries listed in your application. From that point, the trademark offices of the designated countries have a period of either 12 or 18 months to examine your application and notify the WIPO Bureau whether they have any objection to the registration.

If there is any objection from a designated country, the WIPO Bureau notifies you, and you can then decide whether to pursue the registration in that individual member country or abandon the effort. In the best cases, no objections are raised, and your trademark proceeds to registration in the U.S. (home registration) and in each of the foreign jurisdictions for which you have requested registrations.

The Madrid Pitfalls

Life under Madrid is not all wine and roses. There are some disadvantages and potential pitfalls you must be wary of.

Your international registration is only as good as your country registration. The International registration depends on your home country registration. So, for example, if your U.S. application is cancelled or rejected, you have to convert your application to individual national applications in order to continue to pursue the mark in other countries. That could cost a lot more money than you saved during the initial application process.

Foreign examination can result in refusal. If your trademark is refused a foreign trademark registration, you must then hire lawyers in that jurisdiction to overcome the examiner's objections. Therefore, the costs of registration can still be substantial.

Attacks on your international application are easier. There is a possibility of an attack on your international registration, allowing opponents of your mark to challenge your mark at the international level, rather than on a country-by-country basis. This makes it easier for potential opponents to attack a registration in multiple countries all at once.

Trademark searching is going to change, and likely get more expensive. Even if you are applying for registration of a trademark in the U.S. alone, more comprehensive trademark searching will be required. The Madrid Protocol raises the possibility of conflicting international registrations; therefore, U.S. trademark searches have to include the WIPO Bureau records. That is because someone from any member country can f ile for priority use in the U.S. simply by filing the Protocol application.

Your U.S. applications will change. Even U.S. trademark applications will change as a result of the Protocol. Now, color trademarks will be accepted by the PTO.

Your Trademarks and the Future

The advantages and disadvantages of international registrations are unique to each company or individual and the particular mark you are trying to protect. As the U.S. enters this new international arena, expert counsel in the area of international trademark law is absolutely necessary to navigate the new frontiers of trademark law. Cooper, White & Cooper LLP's Intellectual Property Group is here and ready to assist you.

Please contact Marcy Bergman, Walter Hansell, Cyrus Wadia, or any of the attorneys in Cooper's Intellectual Property Group if you have any questions regarding trademark registration and protection, or the Madrid Protocol.

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