Globalization Of Trademark Protection: The Madrid Protocol

April 1, 2004

By: Daniel K. Robyn

Since November 2, 2003, our clients have had the opportunity to apply for registration of their trademarks and service marks internationally by filing an application, in English, in the United States, paying on fee and selecting 59 countries in which their applications will be processed. This so-called "one-stop shop" system of trademark applications for the U.S. trademark and service mark owners was made possible by the United States depositing its instrument of accession to the Madrid Protocol with the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, on August 2, 2003, after passing the Madrid Protocol Implementation Act (MPIA) in November of 2002. The U.S. Membership to the Madrid Protocol took effect on November 2, 2003.

The countries which agreed to the treaty include many of the United States' major trading partners such as Australia, Austria, Belgium, China, Czech Republic, Denmark, Finland, France, Germany, Greece, Iceland, Ireland, Italy, Japan, Korea, Luxembourg, Netherlands, Norway, Poland, Portugal, Russia, Singapore, Slovakia, Spain, Sweden, Switzerland, United Kingdom and Turkey. Thus far, the most notable omissions from the treaty include Canada, Hong Kong S.A.R., Israel, Mexico, New Zealand, the Central and South American countries, most of Africa and the Middle East.

To apply for registration of trademarks or service marks under the Madrid Protocol, the U.S. applicant needs to prepare and file an international application with the United States Patent and Trademark Office ("USPTO"). The application then designates the countries in which International registration is being sought. The fee to be paid to the USPTO will depend on how many countries and how many different classes of goods or services are selected. As of the end of 2003, the initial filing fee charged by the USPTO per mark and per class was $335, the fee for the international trademark certification to WIPO $100. Application fees charged by WIPO are in Swiss Francs (CHF) and amount to CHF 653 (approximately $490) plus the individual national fees which vary depending on the member country (from approximately $45 to $670).

The USPTO then transmits the international application to WIPO where a limited review of the application, essentially for formalities is conducted prior to publishing the mark in the WIPO Gazette of International Marks. The WIPO will then forward the application to the national trademark offices of each member country designated in the application. The national trademark office then processes the application in accordance with its own national laws. Each member nation has up to 18 months to refuse the application and, if the application is not refused within that time period, the mark will be deemed registered in that country.

While the filing of one application in English is more cost effective than the filing of numerous national applications in their respective national languages, the international application under the Madrid Protocol may not always be the best way to proceed. For instance, the United States, which is the "home" application for U.S. applicants, require a relatively narrow and sometimes painfully detailed description of the goods and/or services to which the mark will be applied, whereas other member countries allow broad descriptions of goods and services under their national laws. In cases where a U.S. applicant desires a broad description of its goods or services, it may be preferable to file separate national applications in member countries permitting broad a broad description instead of designating such countries in the international application.

Furthermore, the international application is dependent upon the home application or registration for five years. If, during that period of the time, the home application or registration is amended, canceled, denied or withdrawn, the same will happen to the international application and all extension filings to designated member nations. Accordingly, if the USPTO requires the applicant to amend its goods or services description, the description will be amended accordingly in all designated member countries. However, it is possible under the Protocol to convert the international application or registration to a national application or registration in the designated member countries, while retaining the original filing date and any claimed priority. The drawback resulting from such a conversion would be that additional costs will be incurred which would eliminate any savings the applicant reaped under the Madrid Protocol. After the five-year period, the international registration will become independent of the home application or registration.

Moreover, under the Protocol, the form in which a mark is filed in the applicant's home country dictates the form in which it will be extended to other member countries. It does not contain a provision regarding the international application for a change in the form of a mark from the mark in the home country. For instance, the United States is fairly liberal in permitting registration of marks consisting of single letters of double-letter combinations, whereas other member nations will not register these letters unless they are in color or part of a logo or other device. Accordingly, filing a single letter mark in the United States and seeking an extension of that filing in other member countries may result in a refusal of the application by other member nations.

The procedures of the Madrid Protocol apply equally to applicants from all member nations. Non-U.S. applicants can apply in their home countries to register their trademarks or serviced marks in the United States. As a result, U.S. trademark owners should monitor the WIPO database and new applicants filed by Protocol-member nations with the USPTO, by employing "watch services," in order to be able to file the appropriate oppositions to new applications with the USPTO. Now that the world largest economy has joined the international trademark registration system, U.S. trademark owners will face both new opportunities and new risks as the world moves towards global trademark protection to match global trade routes.

Daniel K. Robyn, a German lawyer, focuses his practice in the areas of Corporate Law, Business Litigation and International and German Law. Mr. Robyn is resident in the firm's Los Angeles office.