The Madrid Protocol provides a centralized system for trademark filings. To date, over 80 nations and international organizations are members of the Madrid Protocol. The U.S. has been a signatory to the Madrid Protocol for over eight years, but the potential benefits and pitfalls are still unknown to many. While a U.S.-based trademark owner may use the Madrid Protocol and enjoy a cost-effective procedure to protect its mark and streamline its filings, there may be situations where filing separate trademark applications with national trademark offices makes more sense.
Using the Madrid Protocol, a U.S. company may extend protection for a trademark in one or more member countries by electronically filing with the U.S. Trademark Office an international application designating member countries where trademark protection is sought. A U.S. company may base its international application on an existing U.S. registration or on a new U.S. application. Payment is made to the U.S. Trademark Office using U.S. currency, and no translations are needed.
The international application is then transmitted to the International Bureau ("IB"), examined by the IB and assigned a single number used to identify the application and registration throughout subsequent processing at the national level. Each designated member country's national trademark office then evaluates the application according to its national standards. If the national trademark office of a designated country does not raise an objection and a third party does not oppose the registration, the national trademark office will extend protection of the mark to the designated country. The single international registration usually will be valid for 10 years (it runs concurrently with the base registration). The U.S. company may subsequently renew the international registration for additional 10-year terms with a single filing at the IB. Thus, the system allows a trademark to be registered in all designated countries as of the filing date of the international application with the U.S. Trademark Office.
Using the Madrid Protocol often obviates the need for the U.S. company to retain separate local trademark counsel in each country in which it wishes to file a trademark application, unless the national trademark office issues a rejection or requires additional information. Similarly, under the Madrid Protocol, one need only file a single document to reflect a change of name or address, or title to or security interests in a registration. If there is a change to record ownership of several international registrations, the U.S. company may record a single document at the IB to reflect the change. Additionally, if the U.S. company later expands its business to other member countries, or protection is desired in a country that may be a future member of the Madrid Protocol, the U.S. company may subsequently designate (i.e., add) the country under the same international registration. Generally speaking, the filing and maintenance fees associated with the international registration are lower over time than maintaining several separate national registrations.
While the Madrid Protocol has some obvious advantages, there are some disadvantages that trademark owners should keep in mind. Under the Madrid Protocol, the description of goods or services in the international application must be the same as or narrower than the description of goods or services in the application or registration on which it is based. If a base U.S. application or registration has a relatively narrow description of goods or services, the corresponding international application must have the same or a narrower description of goods or services. This may adversely affect foreign trademark litigation matters, as foreign trademark rights are often based upon registration. Generally, the U.S. Trademark Office does not allow one to register a mark with a broad description of goods and services. In contrast, foreign trademark offices tend to allow broader descriptions of goods and services. Thus, in certain circumstances, it may be advantageous to file a separate application directly in a national trademark office with a broader description of goods and services than ordinarily allowed in the US.
Also, under the Madrid Protocol the freedom to assign ownership of an international registration is generally restricted to entities residing in or having a connection with a Madrid Protocol member country. For example, the Madrid Protocol prohibits a U.S. company from transferring an international registration to an entity located in Canada, Mexico, Brazil, or other countries that are not members of the Madrid Protocol. An additional disadvantage is that the Madrid Protocol does not allow for alteration or modernization of the display of a design mark that is the subject of an international registration, and there are limited means to amend the description of goods or services in the international registration.
Additionally, for a period of five years from the date of its registration, an international registration is dependent on the base application or registration. If the base application is abandoned or the base registration is cancelled, the international registration will be cancelled. Consequently, extensions of protection in any designated countries will lapse if the international registration is not converted into separate national applications in the designated countries within a specified grace period. Often this conversion process is expensive as it requires the trademark owner to retain local trademark counsel and pay additional filing fees. Similarly, an international registration may be placed in jeopardy if a third party attacks the base application or registration through opposition or cancellation proceedings. This is of par ticular concern in the US, where oppositions and cancellations may be based upon common law rights.
In summary, the Madrid Protocol may be quick and inexpensive, but it is not for everyone. Generally speaking, U.S. trademark owners with incontestable registrations or registrations having broad descriptions of goods and services are likely best suited for the Madrid Protocol. It may make sense to use the Madrid Protocol to avoid renewing older national registrations. Separate national trademark applications may be best where an entity has a significant commercial interest in a country, or where there is concern that there will be obstacles to registration before a national trademark office, for instance, where a mark is somewhat weak or
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