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The Madrid Protocol: An International Trademark Registration System by Ross Martin




The Madrid Protocol is an international treaty established in 1989 that facilitates international trademark protection through streamlining international trademark application filing. One of the main goals in drafting the Madrid Protocol was to entice countries, like the United States, that had never joined a similar 1891 treaty, (the Madrid Agreement), to join the Protocol. On Saturday, November 2, 2002, President Bush signed legislation that implements U.S. accession to the Madrid Protocol.

The Madrid Protocol, like the Madrid Agreement, makes it possible to obtain foreign trademark protection by means of one application submitted to the World Intellectual Property Organization (WIPO), located in Geneva, which is then forwarded by WIPO to the member countries selected by the applicant. Currently, 56 other countries are members of the Madrid Protocol. U.S. accession to the Protocol will take place near the end of 2003, after the Patent and Trademark Office (USPTO) establishes implementation regulations and the U.S. State Department deposits the instrument of accession with WIPO.

To file an international trademark application under the Madrid Protocol, applicants must first register or apply to register their mark in their home country. The international application is based on this home country registration or application. The trademark holder will then file the international application, designating the countries where protection is sought, with their home country's trademark office, which will, in turn, have two months to forward the application to WIPO. WIPO will then forward the application to the Trademark Offices of each selected member country. These countries will evaluate each international application received from WIPO according to their own examination and registration procedures. Ultimately, the applicant will have a bundle of foreign trademark registration rights, all bearing the same international registration number.1

It is generally believed that U.S. accession to the Madrid Protocol will net positive results for U.S. businesses and trademark owners.2 However, there are many issues that must be considered before deciding to seek foreign registration under the Madrid Protocol. The trademark seeker must consider the resources available to do searches, the scope of protection sought, and the descriptiveness of the mark.3 All of these factors must be analyzed together with the trademark registration laws and procedures of each individual country where protection is sought.4 In some instances, seeking protection through the Madrid Protocol may prove cost effective and more efficient; but in most cases, it may be wiser to file individual national applications, which is the current practice in the U.S.

Some potential benefits of the Madrid Protocol5:

  • Applicants can file in several foreign countries with one application and in one language (English or French), thereby reducing translation and application preparation costs.
  • Applicants can forego the hiring of independent foreign counsel to file the application. This will reduce costs of the professional filing fees.
  • Registrants will only need to track one registration for renewal, assignment, and change of address purposes once the mark is registered in the designated member countries.
  • In contracting for the assignment of trademark rights, parties will only need to deal with one system, rather than several individual countries.

Some disadvantages of the Madrid Protocol6:

  • Since the U.S. requires a comparatively narrow description of goods, a U.S. applicant under the Madrid Protocol may sacrifice the broader trademark protection available in many foreign countries provided through the filing of individual applications.
  • Any costs saved by initially not hiring independent foreign counsel will most likely be lost if the application has any difficulties during the examination of the application or is opposed by a third party because then independent foreign counsel will be necessary.
  • To keep priority from the home country registration or application, the international application must be filed with WIPO within two months of the home country filing date. Otherwise the priority date will be the WIPO receipt date. Under the Paris Agreement, home country priority can be maintained by filing individual foreign applications in Paris member countries for as long as six months.
  • The biggest disadvantage is that if trademark rights are lost in the applicant's home country, the international application in each country will die too. Then individual applications must be filed in the national offices of the designated countries in order to maintain the priority established under the international application, resulting in new filing and professional fees, and requiring a local attorney.

In conclusion, the main beneficiaries of the Madrid Protocol are likely to be the very large corporate trademark owners with in-house trademark legal departments. All others would be well advised to seek the legal counsel of a trademark attorney.

IPLG attorneys are prepared to advise clients on international trademark registration options and the viability of filing under the Madrid Protocol (when that option becomes available in late 2003). For more information, please contact Shinae Kim-Helms at (408) 286-8933.

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1See John Welch, Madrid Bound: The United States Approaches Ratification of the Madrid Protocol, INTELLECTUAL PROPERTY TODAY, Dec. 2000, at 34.
2See Carlo Cotrone, The United States and the Madrid Protocol: A Time to Decline, A Time to Accede, 4 MARQ. INTELL. PROP. L. REV. 75; and P. Jay Hines, A Short Primer on the Madrid Protocol for U.S. Trademark Owners and Counsel, INTERNATIONAL TRADEMARK ASSOCIATION, found at http://www.inta.org/policy/madrid_primer.shtml (last viewed on Jan. 4, 2003).
3See Welch supra, note 1 at 34.
4 See Id.
5See Piper Rudnick, Madrid Protocol Client Alert (2002), http://piperrudnick.com/db30/cgi-bin/pubs/MadridProtocolOct02.pdf.
6See Id.

For more information check out the WIPO website at http://wipo.org.

 


 


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