Co-authored by Susan J Kohlmann and Carolina A. Fornos
Late last year, President Bush signed a law implementing the accession of the U.S. to the recently ratified Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol). This trademark treaty, adopted in Madrid, Spain, on June 27, 1989, provides for participation in the international registration system for trademarks. See 148 Cong. Rec. S10640-01 (daily ed. Oct. 17, 2002). On March 28, 2003, the U.S. Patent and Trademark Office (USPTO) published its proposed rules in the Federal Register. See Fed. Reg. Vol. 68, No. 60. These rules set forth the requirements for submitting international applications and will be designated in Part 7 of 37 C.F.R. as the rules of practice in filings pursuant to the Madrid Protocol. A hearing is scheduled for May 30, 2003 to consider comments. We expect that rules substantially in the form of those proposed will be implemented. Later this year, the USPTO is also expected to create the instrument of accession for deposit by the U.S. with the International Bureau of the World Intellectual Property Organisation (WIPO) – the entity that maintains the International Register of Marks.
The Madrid Protocol will allow a U.S. trademark applicant to seek trademark protection in up to 57 different member nations at the same time a U.S. application is filed with the USPTO. Such protection may be sought by filing one application with a single office, in one language, with one set of fees in one currency. Similarly, the Madrid Protocol will enable trademark applicants in member nations to seek protection in the U.S. by filing applications in their respective home countries. The U.S.’s accession to the Madrid Protocol will allow U.S. participation in a truly trans-national trademark filing and registration system.
It Only Took 111 Years
The growth of the Internet and e-commerce has greatly increased global trade. This has spurred a concurrent expansion in the need to protect trademarks in countries where goods may be sent and to help protect investments in export markets. Although a treaty providing for an international system of trademark registration has been in existence for more than 100 years, the U.S. was never a signatory. The Madrid Protocol sought to gain U.S. assent by harmonizing international interests.
Filing Under The Madrid Protocol
To obtain protection for a mark in signatory nations, a U.S. domiciliary, national or business that has filed a trademark application with the USPTO need only complete an Application for International Registration (Madrid Application). The Madrid Application may be based on an application or registration with the USPTO (or respective national office for applicants outside the U.S.), but the applicant need not wait until the mark is registered.
The Madrid Application, available at the WIPO website, requires information on the applicant, a reproduction of the mark, the colors claimed, the date of priority, a description of the goods and services for which protection is sought, and an indication of the Contracting Parties in which protection is sought. See The Madrid Agreement and Protocol: Objectives, Main Features, Advantages, available at
The Madrid Application will be then sent by the applicant’s national office to the International Bureau of WIPO. The USPTO will forward the Madrid Application for U.S. applicants; applications submitted directly by the applicant to the International Bureau will be returned. It is important to note that the application must be transmitted to the International Bureau within two months of receipt to maintain the priority date.
Once received, the International Bureau will verify that the Madrid Application complies with all the requirements of the Madrid Protocol and that fees have been paid before accepting the application. All Madrid Applications are subject to the payment of the following fees: a basic fee (approximately $400); a fee for each designated Contracting Party of the Madrid Protocol (either $45 or an individual fee set by country); and a supplementary fee in respect of each class of goods and services beyond the third (approximately $45). These fees can be paid directly to the International Bureau or to the national office if it agrees to collect and forward such fees. To the extent that the Madrid Application contains any deficiencies, either the national office or the trademark owner will be contacted. Some deficiencies will have to be remedied either directly with the International Bureau or with the national office within three months or the application will be deemed abandoned.
After WIPO accepts the international application, it "registers" the mark (Madrid Registration) in the International Register and publishes it in the WIPO Gazette of International Marks. WIPO also simultaneously sends copies of the Madrid Application to the Trade Mark Registries of all the countries designated by the applicant. Some Madrid Protocol members use this publication as the notice for filing oppositions nationally because some countries do not republish Madrid Registrations in their national official journals. It remains unclear whether the USPTO will republish Madrid Registrations in the U.S. Official Gazette.
With a few exceptions, including the filing of an opposition, the Trade Mark Registry in each designated country will have up to 18 months within which to decide whether to register a mark in its territory or refuse the application. All applications, therefore, will still be examined under the standards of the particular national office. Refusal by each national office can be based on any of the grounds on which an application for registration filed directly with that national office may be refused. See WIPO Website (Overview; Question No. 15 of 20). The International Bureau is then notified of any registration and such action is recorded in the International Register.
The term of the Madrid Registration is 10 years. Renewal, which is also for a term of ten years, can be done through a single filing with WIPO. Thus, a trademark owner renewing a Madrid Registration simultaneously renews the national rights it has obtained through the extension of the Madrid Registration. See id. (No. 18).
Prior to considering worldwide use of a new trademark or filing an international application based on a trademark that has been used in the U.S., applicants should conduct trademark searches of existing registrations and pending applications in each of the countries in which registration is sought. Various U.S. trademark search firms can perform availability searches on international, regional or individual country levels. Trademark searches will provide information to help the applicant predict the availability of the mark in each country as well as the existence of confusingly similar marks. It is prudent to review this information in advance of filing for registration rather than to learn too late from the Trade Mark Registry of the Contracting Party that the application is rejected because the identical or a confusingly similar mark was previously registered. Such review also assists applicants to understand the risks of potential oppositions by parties with similar marks.
International Registration: Advantages Abound
U.S. businesses and citizens seeking protection for their trademarks outside the U.S. are currently required to register separately in each country or region in which protection is sought. The Madrid Protocol eliminates the need to file separate applications in multiple countries and, instead, allows an applicant to file one single application – the Madrid Application. The Madrid Application can be premised on a national application (whether use-based or intent to use) or on a completed registration. The applicant need only designate in which countries protection is sought. A Madrid Application and a Madrid Registration gives U.S. trademark applicants the advantage of an early priority date abroad because the date of the international registration is deemed to be the date on which the USPTO receives the Madrid Application.
In the event that the USPTO application is limited or cancelled within 5 years of the Madrid Registration, the international registrations in the designated countries may be transformed into a series of national applications in those designated countries, instead of being cancelled. These applications will retain the original filing date (i.e., the international registration date) and any priority claimed. After 5 years, the loss of the USPTO registration has no effect on the international registration.
The Madrid Protocol’s elimination of multiple filing requirements also should result in significant savings, estimated at 67%, in application fees for U.S. applicants. Further, upon payment of a single fee, a change in ownership of a mark by assignment can also be effective in all designated countries by one recordation in a single document. If a U.S. applicant files an international application based on an existing U.S. registration (and thus cannot obtain the benefit of the original USPTO filing date), significant cost savings will still be realized. Although U.S. applicants for international trademark registrations will now be able to use U.S. lawyers to initiate and oversee the process, applicants may still need to retain local counsel in individual countries if trademark applications are opposed.
Disadvantages Of The Madrid Protocol
Under the Madrid Protocol, the home country application becomes the application filed in all the designated countries. Thus, a U.S. national is limited everywhere to the goods or services identified in its original application. Such a restriction presents a disadvantage to U.S. trademark owners because trademark applications in the U.S. require a specific identification of goods and services that is more restrictive than the trademark application requirements of many of other Contracting Parties. Nevertheless, while U.S. trademark owners might obtain wider protection if they filed separate applications in each country, the cost savings of international registration may outweigh such additional protection.
As the USPTO has just issued proposed rules for processing international applications under the Madrid Protocol, it remains unclear how foreign applications with a broad identification of goods and services will be treated. Once WIPO determines that the Madrid Application satisfies its requirements, the U.S. is required to process the request. There is speculation that many foreign trademark owners seeking to extend Madrid Registrations to the United States will be forced to narrow their description of goods or services appearing in the Registration.
Stay Tuned
The accession to the Madrid Protocol by the U.S. signals its willingness to become part of a fast, low-cost, and efficient system that promotes the international registration of marks. This should assist American businesses in protecting their proprietary names and brand-name goods overseas. See S. Rep. No. 107-46, at 5 (2001). Congress notes that the resolution ratifying the Madrid Protocol is especially critical to small and medium-sized businesses. See id. The Madrid Protocol is set to take effect after the U.S. deposits the instrument of accession with WIPO or on November 2, 2003, which ever occurs later. While the U.S.’s accession to the Madrid Protocol has the potential to provide U.S. nationals access to an international trademark registration system, the effectiveness of the system will be determined by the USPTO’s rules and guidelines and efficiency in processing the applications.
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