• NOW is the Time to Expand Your Brand: Take Advantage of Dramatic Changes in International Trademark Practice and Take Your Trademarks to the World
  • October 21, 2003
  • Law Firm: Perkins Coie LLP - Seattle Office
  • Two significant changes in international trademark law will take place on November 1 and 2, 2003. First, you have an opportunity to have your European Union Community Trademark ("CTM") extended to ten new countries without any potential for challenge from the trademark owners in those ten countries. Second, a streamlined and dramatically less expensive method for acquiring trademark rights in countries across the world will become available to U.S. trademark holders for the first time.

    International Registration: The Madrid Protocol and The Power of One

    The United States is now one of 60 members to the international trademark treaty called the Madrid Protocol. Beginning November 2, U.S. trademark applicants will be able to submit one application to seek to extend U.S. trademark rights to all of the member countries they designate. Under this system, only one application, in one language, and with one fee need be filed. In addition, applicants do not need to pay any foreign counsel fees in connection with this filing.

    The potential savings under this system are striking. Under the old system of separate filing in each country, we would estimate a cost of nearly $6,000 to file in one country in Asia (for one mark in three classes). Under the Madrid Protocol, we believe that the cost for filing in both China and Japan will be approximately $2,000 (again, for one mark in three classes).

    In short, one application, one fee, and one counsel will enable U.S. applicants to file in countries that previously were considered prohibitively expensive.

    Community Trademarks: "Automatic" Expansion of Rights Only for a Limited Period

    In May 2004, ten new countries -- Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, the Slovak Republic, and Slovenia -- will become part of the now fifteen-country European Union. While the International Registration can cover countries currently a part of the EU, in most cases a CTM application still will be the best choice for trademark protection in Western Europe. If you file for a CTM before November 1, 2003, trademark holders in the new countries will not be able to challenge such applications, even though the registration will extend to those countries. Consequently, if a CTM would enhance your portfolio, NOW is the time to file.