• Integrating the Madrid Protocol into an International Branding Strategy: Start Before November 2nd
  • October 20, 2003 | Author: John A. Livingstone
  • Law Firm: Dorsey & Whitney LLP - Palo Alto Office
  • Executive Summary

    On November 2, 2003, the United States will be joining 59 other countries, listed below, as a member of the Madrid Protocol, an international treaty administered by the World Intellectual Property Organization (WIPO) that allows a brand owner to file a single application in its home trademark office and "extend" it to as many other member countries as it desires.1 U.S. brandholders should review their portfolios this month in advance of the effective date to determine whether filings under the Protocol will benefit them and consider any U.S. trademark applications they may want to file to establish prior rights in advance of the treaty's full implementation. Used in conjunction with the existing European Union Community Trade Mark (CTM) system and selective individual national filings, the Madrid Protocol will be a useful and cost-effective tool in protecting brands in many major markets.

    How Does it Work?

    To file an application under the Madrid Protocol, an applicant must be a "qualified owner" of either a pending application or a registration on file in the national trademark office of the applicant's "home country." This means that U.S. companies will need to have at least an application for federal registration on file with the United States Patent & Trademark Office (USPTO) before filing a single, standardized "international application" at the USPTO that requests coverage for the same mark and some or all of the goods covered by the U.S. application, and identifies the Protocol-member countries where registration of the subject mark is sought. As a result, the international application and the eventual international registration will be limited to the goods and/or services identified in the existing USPTO application/registration. New U.S. applications filed before November 2, 2003 can obtain "priority" over registrations extended by the Protocol on or after November 2nd, so U.S. brandholders should consider any new applications to cover brand extensions or new marks in advance of November 2nd.

    After completing its review of the application, the USPTO will transmit the application to WIPO for further processing. WIPO will review the application to ensure that it meets the minimum filing requirements, assess the filing fees (which consist of a basic filing fee plus an additional fee for each country where registration is requested), and forward the application to each national trademark office to examine the application under its substantive trademark laws. An application filed under the Protocol must undergo substantive examination by the national trademark offices within 18 months of the application's transmission by WIPO, which significantly decreases the length of the application process in many countries. Under the Protocol, for example, a U.S company in need of trademark protection in China, Japan, Switzerland and Korea (all members of the Madrid Protocol), can simply file one standardized application in the USPTO, pay one fee, and obtain a single registration encompassing a series of underlying national applications in each of the named countries. The resulting registration will have one registration number and one renewal date.

    International Registrations issued under the Madrid Protocol last for 10 years and may be renewed for subsequent 10-year terms. Renewal of an International Registration is accomplished by filing a single renewal application with WIPO.

    Madrid Protocol: Advantages and Disadvantages

    The advantages of international trademark prosecution under the Madrid Protocol are clear:

    • Centralized filing through WIPO via the USPTO
    • In one language
    • In one currency
    • With one registration and renewal period It should be clear that this will offer a cheaper, faster, easier way to obtain multiple registrations in many cases.

    But while it appears that the Madrid Protocol will be useful to our clients in many circumstances, it is not a one-stop or "one-size fits all solution" that can address all international branding needs in all situations. It is particularly important to keep the following issues in mind when evaluating the Madrid Protocol as a tool for achieving your foreign brand protection goals:

    • International Registrations are dependent on the home application/registration and subject to "central attack" for first five years (but transformation to individual national applications is possible);
    • International applications based on U.S. applications are limited to a narrow identification of goods and services per US law; and,
    • Assignment of International Registrations is limited to parties located in countries that are members of the Protocol. Additionally, for those of our clients who are interested in obtaining brand protection in Europe, the cost of obtaining and maintaining a Community Trade Mark registration, if available, may well be lower than filing either individual national applications or via the Madrid Protocol.

    Cost

    We believe that the Madrid Protocol will be a cost effective tool over the life of a portfolio if used carefully and appropriately. Cost savings are expected during initial prosecution phase of the application, as the assistance of foreign associates will not be required at the filing stage. These costs typically range between $400 and $800 per associate per country; therefore, we expect a corresponding range in initial cost savings per country. However, if extensions into a particular country encounter difficulties, in the form of Office Actions or Opposition proceedings, it will still be necessary to hire an associate and total costs will likely be comparable to those associated with traditional national filings. Once an application has matured into a registration, however, significant savings are expected over the life of the registration as renewal and maintenance procedures and costs are centralized through WIPO.

    Impact on US Trademark Search, Clearance and Filing Strategy

    It is essential that U.S. companies appreciate the need to expand their trademark search methodology, even for marks that will only be used in the U.S., as companies or individuals in other Protocol-member countries will now be able to extend protection to the U.S. through the Protocol. To avoid surprise, U.S. trademark owners will want to search at least the trademark records at WIPO in addition to the federal, state and common law sources now consulted, and may need to develop more intensive strategies before adopting many new marks.

    Conclusion and Recommendations

    The imminent availability of the Madrid Protocol to US companies, while not a panacea, certainly provides another useful tool that can be used to formulate a coherent international brand protection strategy. In general, our recommendation will be to use the Community Trade Mark (CTM) for protection in Europe, to utilize the Madrid Protocol for any other member countries of interest, and to file national applications for additional countries of interest that are not members of the Madrid Protocol. However, there may be some cases where this general approach is not appropriate. To maximize the benefits of the Protocol (as well as the benefits of Community Trademark protection and traditional national filings) it will be more important than ever to consider your company's current and future foreign trademark protection needs carefully, and evaluate the options available to reach these ends most effectively and efficiently. Our review of the available options suggests that foreign filing strategy will need to be determined on a case by case basis, based, in part, upon the strength of the home application, the results of the searches, a company's current and future countries of interest, and the availability and appropriateness of the Community Trade Mark to address these needs in Europe. Now, more than ever, US brandholders will need a carefully considered strategy, taking into account domestic and international law and their overall brand management goals, to maximize the benefits (and potential pitfalls) of the Madrid Protocol and integrate it into an overall brand protection program.

    1It should be noted, however, that the Madrid Protocol system is not a substantive trademark law and an application filed under it does not result in a unitary "Madrid Registration." While the registration issued under the Protocol is often referred to as an "international registration," it differs from registrations issued under such collective organizations as the European Union, which offers the Community Trade Mark (CTM), because it is not a freestanding, supranational registration. Instead, the Protocol provides a centralized mechanism for simultaneously filing applications for and obtaining, what are in effect, separate national registrations based either on a pending application or existing registration on file in the national trademark office of the applicant's home country.

    Madrid Protocol Members (by region)
    (current EU member; pending EU member)

    Western Europe

    Austria
    Belgium
    Denmark
    Finland
    France
    Germany
    Greece
    Ireland
    Italy
    Luxembourg
    Netherlands
    Portugal
    Spain
    Sweden
    United Kingdom

    Cyprus
    Iceland
    Liechtenstein
    Monaco
    Norway
    Switzerland

    Eastern Europe

    Czech Republic
    Estonia
    Hungary
    Latvia
    Lithuania
    Poland
    Slovakia
    Slovenia
    Albania
    Armenia
    Belarus
    Bulgaria
    Former Yugoslav -Republic of Macedonia
    Georgia
    Republic of Moldova
    Romania
    Russian Federation
    Serbia and Montenegro
    Turkey
    Turkmenistan
    Ukraine

    Africa/Middle East

    Kenya
    Lesotho
    Morocco
    Mozambique
    Sierra Leone
    Swaziland
    Zambia

    Asia/Pacific

    Australia
    Bhutan
    China
    Dem. People's Rep. of Korea
    Japan
    Mongolia
    Republic of Korea
    Singapore

    Caribbean

    Antigua and Barbuda
    Cuba