Overview of Madrid Protocol

The Protocol Relating to the Madrid Agreement concerning the International Registration of Marks (the “Madrid Protocol”) is an international trademark treaty that permits a trademark owner to seek registration in any member country¹ by filing a single application for International Registration. An International Registration is equivalent to a registration of the same mark effected directly in each of the designated countries.

On November 2, 2003, the Madrid Protocol became operational in the

United States. Now, a United States entity is able to file a single application for an International Registration, based upon its United States registration or application, which can be extended to the MadridProtocol member countries worldwide.²

In order to obtain an InternationalRegistration, a United States applicant³ must file an application in United States Patent and Trademark Office (“USPTO”). The application should be filed in English, and payment made using United States currency. 4 The USPTO forwards

the application to the International

Bureau of the World Property IntellectualOrganization(“International Bureau”), in Geneva,Switzerland, which administers the International Registration System. The International Bureau reviews the application, in order to determine whether the application conforms to the required formalities. If the application conforms, the International Bureau “registers” the mark in the “International Register.” Thereafter, the International Bureau forwards the International Registration to the trademark offices of each country,

Albania, Antigua and Barbuda, Armenia, Australia, Austria, Belarus, Belgium, Bhutan, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Georgia, Germany, Greece, Hungary, Iceland, Iran (Islamic Republic of), Ireland, Italy, Japan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liechtenstein, Lithuania, Luxembourg, Monaco, Mongolia, Morocco, Mozambique, Namibia, Netherlands, North Korea, Norway, Poland, Portugal, Republic of Moldova, Romania, Russian Federation, Serbia and Montenegro, Sierra Leone, Singapore, Slovakia, Slovenia, South Korea, Spain, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Turkey, Turkmenistan, Ukraine, United Kingdom, United States, Yugoslav Republic of Mecedonia, and Zambia

2 Conversely, a foreign entity will be able to extend its International Registration rights to the United States. This article focuses on United States entities.

3 An International Registration applicant who has a pending United States application or a United States registration, and who is filing through the United States Patent and Trademark Office, must be a national of, be domiciled in, or have a real and effective business or commercial establishment in the United States.

4 However, if an applicant submits an application for International Registration to the USPTO on paper, rather than by electronic filing, then the international fees cannot be paid through the USPTO in United States dollars.

which then conduct whatever examination process exists in each particular nation. The trademark offices may refuse an extension of protection on the same grounds that apply to those applications filed directly with that country’s trademark office.⁶

The date of the International Registration is the date of the receipt of the application in the USPTO, provided that the International Bureau receives theapplication within two months ofthe date of receipt at the USPTO; if it does not, then the date is the date of receipt of the application at the International Bureau. An International Registration lasts tenyears from the date of registrationand may be renewed for additional ten year periods upon payment of a renewal fee.

Benefits of Madrid ProtocolThe greatest advantage to an International Registration is the reduction in filing costs and administration. For example, the single application method replacesthe old system, in which a UnitedStates applicant was forced to file separately and pay fees in each nation and hire and pay separate counsel in each country. Madrid Protocol fees for filing are signifi­cantly less than if applications were filed in each individual country. Further, there is no need to hire legal representation in a foreign country unless a response is needed to the trademark office of that country. In addition, renewals, assignment, and other maintenance requirements for the registration are accomplished by a single filingwith the International Bureau. An additional benefit is that as additional countries join the Madrid Protocol, an owner can

apply to extend its International Registration to those countries.

Disadvantages of MadridProtocol

The International Registration has its drawbacks, as well. International Registrations are limited to the narrow description of goods and services listed in theunderlying United States registra­tion or application, rather than thebroader identifications allowed in most countries. An additional disadvantage is that there is no provision for the modification or amendment of the mark or goods and services set forth in the International Registration. Further,an assignment of an InternationalRegistration can only be recorded ifthe assignee is an entity that has a connection to a Madrid Protocol member nation. Certain key regions and countries, such as Canada, have not signed on to the Madrid Protocol.

Another major drawback is that an International Registration remains dependent on the underlyingUnited States registration or appli­cation for five years. If the UnitedStates registration or application is refused registration, withdrawn, cancelled, abandoned or not

renewed within the five year period, the foreign rights could beabandoned. This could also make itmore attractive for competitors to challenge the United States registration or application in the hope of invalidating foreign rightsas well. However, the MaProtocolprovides for this type of situationby allowing for the “transformation”of the application. Applicants may convert their application for International Registration to national applications in each separate country. The request for

transformation must be filed within three months of the date of cancellation of the International Registration. Such application would have the benefit of the International Registration as its priority date. However, each application must then be re-examined in each country.

In order to adhere to the MadridProtocol and comply with international trademark law, the United States amended some of its procedures for United States trademarks. For example, if a trademark is to be depicted in color, then the reproduction of themark in the application must alsobe in color. In addition, opposition proceedings against all United States applications, whether or not they have been extended by an International Registration, must be filed within 180 days of publication, or the application will pass to registration.

Conclusion

The Madrid Protocol can help streamline the International Registration process for United States entities. On the other hand, while accession to the Madrid Protocol has permitted the United States to participate in a global trademark filing and registration system, there are still disadvantages to the system. A United States trademark holder should weigh the advantages and disadvantages carefully before committing to the new procedure.

Ms. Goldbard is the Administrative Partner, and Ms. Heft is an associate, with the Intellectual Property group at the New York office of Stroock & Stroock & Lavan LLP