Madrid Protocol to Revolutionize International Trademark Registration

Publications

Author(s)

For years, United States businesses attempting to register trademarks overseas have cried out in unison, "There must be a better way!" Until now, an applicant seeking to register a trademark in multiple foreign nations generally has been required to hire outside counsel in each nation, pay separate registration fees in each nation, and have documents translated into other languages and/or certified by local embassies or consulates. This process has been expensive, slow, paper-intensive, and often frustrating.

Fortunately, change is on the way. The United States is preparing to accede to the Madrid Protocol, a treaty providing for the registration and protection of trademarks across the boundaries of member nations. The result will be a much simpler and less expensive process for registering trademarks in the over seventy member nations, which include Australia, China, Japan, Korea, Russia, and most of the European nations.

When the Madrid Protocol becomes fully implemented on approximately November 2, 2003, a trademark applicant or registrant with the United States Patent and Trademark Office (USPTO) will be able to designate the extension of the U.S. application or registration to one or more other member nations. The applicant or registrant will pay only one fee, in U.S. dollars, based on the number of nations designated and the number of international classes in which registration is sought. This single fee will generally be significantly less than the total fees that would be incurred by filing separately in each individual jurisdiction, and the accompanying reduction in paperwork and transaction costs will save even more money. The applicant will save on translation costs as well, since all applications under the Protocol, "shall be in either English or French. . .. " However, the greatest savings of all will be on legal fees, since one domestic trademark counsel will now be able to handle trademark filing and maintenance for all designated jurisdictions. Local counsel still will be necessary, however, in any jurisdiction that issues an initial refusal.

The "International Registration" available under the Madrid Protocol, strictly speaking, is not a single registration. Rather, the Protocol's process facilitates filing in member countries based on a single application in the applicant's home nation. Each nation designated will individually examine the application as it would a directly filed application, except that it must issue any initial refusal within 12 months. At the end of that 12 month period, the registration will automatically take effect in all designated nations not having issued an initial refusal. If a nation issues a refusal, the examination may be extended up to 18 additional months, and even more if an opposition is filed. A registration secured by designation has the same legal effect as a registration secured through direct application.

An applicant may still file a separate application in each individual jurisdiction in which registration is sought. Any registration secured in this traditional manner is independent of that mark's registration status in any other jurisdiction. Under the Madrid Protocol, however, an International Registration secured through the USPTO depends completely upon the U.S. application or registration for the first five years of registration. That is, if the U.S. application is refused, cancelled, or otherwise lapses during that period, that action will extend automatically to the International Registration. Likewise, if the U.S. application is narrowed in any way, by amendment, for example, a dependent International Registration would automatically be narrowed as well. For this reason, if a trademark application is at significant risk of drawing a refusal by the USPTO, the applicant may wish to apply for overseas registrations on a nation-by-nation basis. Even if a U.S. trademark upon which an International Registration depends is cancelled, however, registration is not irreversibly lost in the designated nations. In such a case, the (former) registrant can file individual national applications within three months of the cancellation and retain the benefit of the original filing date.

An International Registration will have a ten year term, a single registration number, a single renewal date, and a single renewal fee (currently approximately U.S. $100). Likewise, any assignment or other such post-registration filing requires only one communication and one fee, payable in U.S. dollars.

The holder of a current International Registration who wishes to expand into a new international market need not begin the registration process from scratch. Rather, that registrant may simply designate the nation for addition to the International Registration. The resulting registration will receive the priority date of the new designation, but will expire ten years from the date of the original International Registration.

United States companies doing business internationally should not wait until November 3, 2003 to assess their trademark portfolios in light of the rapidly changing international trademark scene. In less than a year, the process of registering trademarks abroad will become easier and less expensive. As a result, the number of international registrations by United States companies may rise significantly. Because of this potentially increased activity, the contraction of the universe of available marks may accelerate. As a result of this contraction, in addition to new strategic considerations arising under the Madrid Protocol, trademark owners and registrants are encouraged to consult with counsel to prepare for this exciting, but still uncharted, new frontier in trademark law.

You might also be interested in...