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The Madrid Protocol and International Trademark Applications

 
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The Madrid Protocol and International Trademark Applications

Prepared By: Melissa C. Marsh, Los Angeles Business Attorney
Written: December 2003
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On November 2, 2002, the President signed the Madrid Protocol Implementation Act. into law, an international treaty that provides a filing system for trademark registrations. As a result, U.S. trademark owners can now streamline the application process for international registrations by submitting a single application to the International Bureau if the World Intellectual Property Organization ("WIPO"). Approximately 60 other countries are a party to the Madrid Protocol. These countries are called "Contracting Parties" and a current list is available online at the WIPO's website. Any trademark owner with an application filed in, or a registration issued by, the United States Patent and Trademark Office (USPTO) and who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the United States can submit an international application through the USPTO.

How To File An International Application Pursuant to the Madrid Protocol.

To file an international application through the USPTO, an applicant must have a U.S. application, called a "basic application" or a U.S. registration, called a "basic registration." The mark and the owner of the international application must be the same as the mark and the owner of the basic application or registration. The international application may be based on more than one USPTO application or registration provided the mark and the owner are the same for each basic application and/or registration. The international application must include a list of goods and services that is identical to or narrower than the list of goods or services in the basic application or registration. At the time of submission, the international applicant must pay the U.S. certification fee(s) and identify at least one Contracting Party in which an extension of protection (that is, registration in a Contracting Party) is sought.

To file for an international mark, the applicant must provide the following:

  1. U.S. serial or registration number for a mark filed with the USPTO;
  2. Original filing date;
  3. A description of the goods or services delineated in your United States filing;
  4. The list of countries in which you desire to apply for registration;
  5. The trademark owner's name, address, telephone number, facsimile number, and email;
  6. Whether the owner/applicant is a citizen of, domiciled in, or merely doing business in the United States;
  7. Whether the mark is three-dimensional, incorporates sound, or is a collective mark and/or certification mark;
  8. A .jpeg image of any logo attenuated to the word mark that is not less than 300 dpi and not more than 350 dpi in resolution; and
  9. The appropriate certification and filing fees.

An international applicant must pay fees to the USPTO and to the International Bureau. The USPTO charges a certification fee for transmitting international applications to the International Bureau. The certification fee is $100 per class if the international application is based on a single U.S. application or registration; and $150.00, per class, if the international application is based on more than one U.S. application or registration. The International Bureau requires payment of fees based on whether the reproduction of the mark is in black and white and/or in color, the particular Contracting Parties designated in the international application, and the number of classes of goods and services indicated in the international application. The schedule of fees, individual fees and International Bureau Fee Calculator are posted on the WIPO's website. For example purposes only, the application filing fee for a black and white word mark in one class would be $1,200 U.S. if filed for registration in England, France and Japan, and approximately $2,481 if filed for registration with the entire European Community.

An international registration lasts 10 years from the date of registration and may be renewed for additional 10-year periods. For the first 5 years, if the U.S. basic application or registration is refused, withdrawn, abandoned, cancelled or restricted, in whole or in part, then the International Bureau will cancel the international registration. A refusal or cancellation of a basic application or registration after the end of the 5-year period will also result in the cancellation of the international registration, if the action that caused the refusal or cancellation began during the initial 5-year period. However, after the 5-year period has passed, the international registration becomes independent of the basic application or registration.

Advantages to filing under the Madrid Protocol.

  1. The ability to file a single application in the U.S. and to select as many of the 60-member nations as the applicant desires on the same application should provide an initial cost savings.
  2. All applications and communications are in the applicant's chosen language (either English, French, or Spanish).

  3. There is a more finite waiting period for claims against the application.
  4. An international registration is valid for a 10-year period and can be renewed for 10-year periods with a single application.
  5. Once a U.S. trademark owner has an international registration through the Madrid Protocol, the trademark owner may add additional designated countries as the trademark owner expands into new territories.
  6. Maintenance fees for the international registration will be lower as only one renewal fee must be paid to the central processing office at the WIPO, instead of a renewal payment made to each national trademark office.
  7. Trademark assignments and registrant name changes may also be filed centrally at WIPO rather than with each national trademark office resulting in a savings of time and money for registrants.

Disadvantages Attenuated To The Madrid Protocol.

While this one-stop shopping to register and maintain an international trademark sounds appealing at first glance, there are many traps for the unwary scattered throughout the deceptively simple application. As with most offers that sound too good to be true, this one is as well. First, it is critical to understand that filing your application with WIPO is not really a "registration." Rather, the WIPO is really a centralized bundle of individual national applications which must be individually examined by each country's national trademark authority before it matures into national registration. This process generally takes approximately 12 to 18 months. Each application is published for opposition in each designated country, and in the event an application is refused or opposed in any one of the designated countries, timely action is required. This can result in the need to conduct simultaneous foreign inter partes proceedings across the globe. The resultant costs may greatly outweigh the initial reduced registration fee.

Deadlines for responding to office actions in the individual member countries are sometimes quite short. As a practical matter, it is often difficult, and sometimes impossible, to file a timely response because of the time it takes for communication to be mailed from the designated country to WIPO in Switzerland, which is then mailed to attorney of record in the United States. Your attorney must then analyze the office action, retain local counsel in the applicable country, and send instructions for filing a response within the designated deadline. "Prosecution" of the application in each designated country (the process of moving the application from its filing through the examination process) is very costly and involve expenses which often negate the initial cost savings on the "one stop filing" of the applications.

Proceeding with registration under the Madrid Protocol may also unnecessarily severely limit a U.S. trademark owners potentially broader international protection. The USPTO requires trademark applicants to specifically define goods and services (e.g., clothing, namely t-shirts), which in turn limits the trademark protection granted in foreign countries to the coverage specified in the original U.S. application. Many countries, however, otherwise allow for a very broad description of goods such as "clothing" or "computer programs."

In addition, The Madrid Protocol requires the trademark to always remain exactly the same as in the original application. No changes are allowed to the mark as shown in the international application either during the application process or at the time of renewal. This often can cause problems if the applicant is in an industry in which the appearance of a stylized mark would likely change or evolve over time.

It is also important to recognize that a trademark registered pursuant to the Madrid Protocol can only be "assigned" (transferred, sold, licensed, etc...) to another individual or company that is a national, resident, or business in one of the 60 countries that have signed the treaty. Canada and many Latin American countries are not signatories of the treaty.

The European Union Community Trademark.

U.S. companies can also choose to file an Application for European Community Trademarks making it possible to file a single trademark application to register a Community Trademark ("CTM") covering all 25 member countries of the European Union ("EU"). If your business currently trades in Europe, or if your business is planning to trade in Europe, or is doing so without formal trademark protection, then you should strongly consider filing a CTM application.

Conclusion.

The Madrid Protocol is only one of many options for obtaining an international trademark. Applications still may be filed in individual countries, and throughout the European Economic Community through a single European Community Trademark Application. Whether to file in individual countries, the entire European Economic Community, or in select countries via The Madrid Protocol requires extensive research and analysis as to the pros- and cons- for your particular situation.

If you have any questions, or would like the assistance of Melissa C. Marsh, please call 818.849.5206 or Email: legalcorner@aol.com.


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California business lawyer, Melissa C. Marsh, is based in Sherman Oaks and West Hollywood, and serves individuals and businesses throughout Los Angeles County, including: West Hollywood, Miracle Mile, Beverly Hills, Century City, Santa Monica, Burbank, North Hollywood, Valley Village, Toluca Lake, Studio City, Sherman Oaks, Van Nuys, Encino, and Woodland Hills.

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Located in Los Angeles, California, the Law Office of Melissa C. Marsh handles business law and corporation law matters as a lawyer for clients throughout Los Angeles including Burbank, Sherman Oaks, Studio City, Valley Village, North Hollywood, Woodland Hills, Hollywood, West LA as well as Riverside County, San Fernando, Ventura County, and Santa Clarita. Attorney Melissa C. Marsh has considerable experience handling business matters both nationally and internationally. We routinely assist our clients with incorporation, forming a California corporation, forming a California llc, partnership, annual minutes, shareholder meetings, director meetings, getting a taxpayer ID number (EIN), buying a business, selling a business, commercial lease review, employee disputes, independent contractors, construction, and personal matters such as preparing a will, living trust, power of attorney, health care directive, and more.