• International Trademark Registration Strategies
  • October 21, 2003
  • Law Firm: Piper Rudnick LLP - Washington Office
  • Two major events -- the United States implementation of the Madrid Protocol and the expansion of the European Union -- are quickly approaching. Each of these events will significantly impact the filing capabilities of trademark owners who seek to register their marks abroad. Such owners should be aware of key dates for taking advantage of these events.

    I. U.S. Implementation of the Madrid Protocol- November 2, 2003

    On November 2, 2003, the United States Patent and Trademark Office (USPTO) will begin accepting trademark applications under the Madrid Protocol. Applications filed under the Madrid Protocol are referred to as "International Registrations" (though not yet technically a "registration" at the time of filing). Thus, beginning on November 2, 2003, United States trademark owners who have an application or registration on file with the USPTO will be eligible to use that application or registration as a basis for filing an International Registration. When filing an International Registration, the applicant may designate that the filing be extended to any country which is already a member of the Madrid Protocol. Currently, fifty-seven other countries, among them many European countries, Australia, China, and Japan, are members of the Madrid Protocol. This centralized system of filing may offer a number of advantages to trademark owners interested in registering their marks in countries around the world.

    II. Expansion of the European Union - File CTMs By November 1, 2003

    Currently, the European Union consists of fifteen countries -- Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, The Netherlands, Portugal, Spain, Sweden, and the United Kingdom. The European Community Trademark (CTM) is a single trademark registration that covers all European Union countries. On May 1, 2004, the following ten countries are set to join the European Union: Cyprus, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovak Republic, and Slovenia. With the expansion of the European Union, all CTM registrations and applications, even if registered or filed before the May 1, 2004 accession date, will be automatically extended to the ten new countries. No additional fee or paperwork is necessary for trademark owners to effect the expansion of their CTM applications and registrations.

    If trademark owners are planning to file new CTM applications, there is an advantage to filing those applications before November 1, 2003. If the CTM application is filed before or has a priority date before November 1, 2003, the owners of prior rights in the ten new member countries will not be allowed to oppose the newly extended CTM application. CTM applications having a priority date on or after November 1, 2003 will be susceptible to oppositions by owners of prior rights in the new member countries.

    Please note that filing CTM applications prior to the November 1, 2003 date only precludes owners of prior rights in the new member countries from filing an opposition against the extended CTM application. The owners of prior rights in the new member countries are not precluded from objecting to actual use of the mark covered by the CTM if such use would infringe the owners' prior rights in that country.