• The Madrid Protocol: Changing the Face of International Trademark Registration
  • May 2, 2003 | Author: Devon W. Ryning
  • Law Firm: Miller Nash LLP - Seattle Office
  • On November 2, 2002, President Bush signed into law a report that contained the implementing legislation for the Madrid Protocol. This report confirmed the United States' entry as a member of the Madrid Protocol.

    What Is the Madrid Protocol?

    The Madrid Protocol provides for the registration of trademarks with the International Bureau of the World Intellectual Property Organization. It is a one-stop filing mechanism for international trademark protection. Under the Madrid Protocol, an applicant may file for trademark registration in any of the 71 countries that are members of the Madrid Protocol. Notable members include France, Germany, Italy, and Spain.

    How Will the Madrid Protocol Affect U.S. Entities?

    The following example illustrates how the Madrid Protocol will affect U.S. entities. QRS Corporation, a U.S. company, has filed a U.S. trademark application with the U.S. Patent and Trademark Office ("PTO") for the mark SQUIGGY. Realizing the international scope of its business, QRS Corporation decides to obtain foreign trademark protection for the same mark. Under the Madrid Protocol, QRS Corporation may file an application to register the mark SQUIGGY with the World Intellectual Property Organization. This application claims priority from QRS Corporation's currently pending U.S. trademark application for the same mark. Conveniently, the depositing office for the Madrid Protocol application is the PTO.

    If the Madrid Protocol application for the mark SQUIGGY is properly filed, it will be submitted to each member country that QRS Corporation has designated as a country in which it desires foreign trademark protection. Each foreign country elected by QRS Corporation will then review the trademark application under that country's trademark rules and regulations. After a determination that the trademark application satisfies those rules and regulations, QRS will be granted a foreign trademark registration for the mark SQUIGGY. That registration has a term of ten years under the Madrid Protocol, with subsequent renewal periods of ten years each.

    Under the Madrid Protocol, there is one major caveat to QRS Corporation's ability to obtain a foreign trademark registration for the mark SQUIGGY. As stated previously, QRS Corporation's foreign trademark application is based on the previously filed U.S. trademark application for the mark SQUIGGY. If, for any reason, the U.S. trademark application did not register within five years of filing with the PTO, the Madrid Protocol application would fail. QRS Corporation could cure this failure only by refiling trademark applications in the foreign jurisdictions where it had originally sought Madrid Protocol trademark protection for the mark SQUIGGY. This process would be costly because QRS Corporation would need to retain foreign counsel to reapply for trademark protection in the applicable foreign jurisdictions.

    What Are the Benefits?

    Overall, filing for foreign trademark protection under the Madrid Protocol will provide a number of benefits to U.S. entities such as QRS Corporation. First, a U.S. entity may obtain foreign trademark protection under the Madrid Protocol for significantly less expense. Currently, for each country in which a U.S. entity seeks foreign trademark protection, the U.S. entity must hire foreign counsel to file, prosecute, and translate the foreign trademark application. Under the Madrid Protocol, because foreign trademark applications are filed in one application with the PTO, a U.S. entity will not have to employ foreign counsel. This may save the U.S. entity a significant amount of money in foreign counsel and translation fees. Second, it will be more efficient to file for foreign trademark protection under the Madrid Protocol. At this time, U.S. entities must file individual trademark applications in each foreign country in which they seek foreign trademark protection. The Madrid Protocol will allow an applicant to file for foreign trademark protection in 71 member countries through one application that is filed with the PTO. This will save a significant amount of time for a U.S. entity wishing to obtain foreign trademark protection.

    Conclusion

    Although President Bush signed the implementing legislation for the Madrid Protocol in November 2002, it will take approximately one year for the PTO to adopt and formalize regulations for the Madrid Protocol. As a result, U.S. entities will have to wait until winter 2003 to take advantage of the Madrid Protocol's one-stop filing mechanism.