International Trademark Protection
Using the Madrid Protocol: Worth
the Convenience?
T.J. Romano
tromano@khpatent.com
Kolisch Hartwell, P.C.
Portland, OR
Agenda
• Options for Foreign Trademark (and
Service Mark) Registration
• Focus on Madrid System
– How does the Madrid Protocol work?
– What are the Pros and Cons?
• Examples
• Strategy Considerations
• Useful Resources & Glossary
International Filing Options
Direct
Priority Direct
Madrid System
File U.S. Application
w/ USPTO
Directly File in Each
Desired Country*
Directly File in Each
Desired Country w/
Priority Claim
Each Country
Examines & Grants
Protection
Each Country
Examines & Grants
Protection
File International
App w/ USPTO
WIPO IB Reviews &
Registers
Each Designated
Country Examines &
Grants
Maintenance &
Admin with Each
Individual Country
Maintenance &
Admin with Each
Individual Country
*The term ”Country” throughout includes mechanisms, such as the European Community Trademark (CTM),
that confer rights to multiple countries (e.g., a CTM registration covers European Union countries).
All Non-U.S.
Maintenance &
Admin with WIPO
What is the Madrid System?
• Governed by Madrid Agreement and Madrid Protocol.
– International Bureau (IB) of World Intellectual Property Organization
(WIPO) administers.
– 83 countries parties to the Madrid Protocol.
– U.S. a party only to the Madrid Protocol as of Nov. 2, 2003. Only
Madrid Protocol governs U.S. applications.
• Goal: “Provides a cost-effective and efficient way for
trademark holders … to ensure protection for their marks
in multiple countries through the filing of one application
with a single office, in one language, with one set of
fees, in one currency.” - USPTO Website
• Madrid System is a filing and formalities system and
does NOT confer substantive rights. Substantive rights
come directly from each designated country.
Members of the Madrid Protocol
Notable Exceptions
Canada
& Mexico
India
Central & South America
Prerequisites for Using the
Madrid Protocol
• Active, basic application/registration required,
cannot start with an international application.
• Basic app./reg. must be from forum where
applicant qualifies as:
– having a “real and effective industrial or
commercial establishment,”
– having a “domicile,” or
– being a “national.”
• All applicants must each individually qualify in
that forum.
U.S. applicant basic app. usually with USPTO
When to File Under
Madrid Protocol
• Can file an international app. based on an active, basic
app./reg. at:
– anytime, but within 6 months of filing date of basic app./reg., get
priority claim. After six months, then no priority claim.
• Can file subsequent designation(s) at:
– anytime within 5-year anniversary date of international reg. if basic
app./reg. is active. If within 6 months of priority date, get priority claim.
After six months, no priority claim.
– anytime after 5-year anniversary date for active international reg.
International reg. date is filing date in each subsequently designated
country.
Procedure: Formalities Examination
U.S. Application
Filed or
Registration
Complete
- International priority date is filing date of U.S.
basic app. if international app. received at USPTO
within 6 months of U.S. basic app. filing date.
-Otherwise, it’s date of the international registration,
which is usually the date the USPTO receives the
international app. (but see TMEP § 1902.04 about
defects that impact international registration date)
Must File
International
Application with
USPTO, not
WIPO
- Use TEAS or paper form.
- Designate at least one country.
- Pay USPTO certification fee
($100/class), IB basic fee (starts
at $675), and designated country
fees (varies).
Procedure: Formalities Examination
USPTO Reviews
Application
Formalities
-Identical applicant and mark.
-List of Goods & Services no broader than in the
U.S. basic application / registration.
- Certain indications match (mark description,
three-dimensional, sound mark, color, etc.).
-See TMEP § 1902.02 for all formalities reviewed.
USPTO
Forwards the
Application to the
International
Bureau (IB)
- Basic formalities met.
Procedure: Formalities Examination
IB Reviews to
Ensure Madrid
Protocol Filing
Req’ts are Met
- Reviews description and classification of
goods/services.
-Notice of Irregularity may be sent to
USPTO and/or TM Holder at this stage.
- Time limits for responding.
- Forms on TEAS.
-See TMEP §§ 1902.05-.07.
IB Registers &
Publishes the
Mark in WIPO
Gazette
-If formalities met, then
Registration Certificate sent
to TM Holder.
- Designated Countries
notified separately.
Basic Formalities Checklist
• For U.S. applicant, file international app. with USPTO in
English.
• Include basic registration date/number, or application filing
date/number, as appropriate.
• File within 6 months of basic app. for priority claim.
• Same applicant and mark as in basic app./reg.
• List of goods and services no broader than in basic app./reg.
• Designate Madrid Protocol countries for extending protection.
• Pay fees.
• Review TMEP § 1902 for all formalities.
Procedure: Substantive Examination
Refusal
Each Country
Examines as if
Submitted
Locally
Protection
Granted
- Refusal must be
communicated to IB
within 18 months
(can be longer with
opposition period).
- IB Notifies TM
Holder.
- Country informs IB
protection granted.
- No refusal within 18
months, so IB extends
protection automatically.
Maintenance
• 10 year duration based on date of
international registration, renewable for
additional 10 year periods (6-mo reminder
sent).
• Fee paid to International Bureau.
• Can renew electronically on WIPO website.
• Name, ownership, address changes,
license agreements, encumbrances, also
done centrally for all designated countries.
Central Attack & Transformation
• Within the first 5 years, any failure of the basic
application or registration will result in
corresponding cancellation of the international
registration.
• If this happens, have 3 months to apply directly
with each designated country and still get the
original application date, and priority date, if any.
– But pay more fees and retain foreign agent(s) to file.
Benefits of Madrid Protocol
• File international app. anytime if basic app./reg. is active.
• File one application, in English, and pay one fee for all
designated countries.
• Foreign agent(s) not needed for filing, reducing costs.
• Increasingly cost effective as more countries designated.
• Basic registration can be Supplemental Registration.
• 18-month refusal deadline, then automatic protection.
• International registration becomes independent of basic
registration after 5 years.
Benefits of Madrid Protocol (cont.)
Simplified subsequent management:
• One international registration, with one number and
one renewal date.
• One place to file renewals, changes of address,
assignments, etc. for all designated countries
• Can designate countries anytime during life of
active, international registration.
• Rights under international registration can be
assigned separately (e.g., holder maintain rights in
good A, but assign rights in good B, etc.)
Drawbacks of Madrid Protocol
• International “registration” does not confer substantive rights.
• Not all countries parties to Madrid Protocol.
• Applicant cannot modify international application after filing:
– No modification to recorded mark, even if mark modified in basic
application.
– Can’t expand or extend list of goods/services after submitted,
even to include ones omitted that are in basic app./reg.
• Goods/services may be narrow in scope:
– U.S. registrations contain high level of specificity and based on
use, each limit scope.
– Goods/services in international registration, and thus in
designated counties, restricted to same scope as in basic
registration.
Drawbacks of Madrid Protocol (cont.)
• USPTO must transmit international application to IB within 2 months
of receipt. Otherwise, date of international registration is when IB
receives, not when USPTO received.
• “Central Attack” 5-yr dependency (but 3-month transformation).
• Substantive Examination in Each Designated Country:
– May need local agent anyway if protection refused.
– Designated country can send refusal in English, Spanish, or
French.
• Subsequent Designation: no prorated fees and scope of
goods/services always limited to international registration.
• Assignee must qualify as a person, domicile, or effective business in
a Madrid Protocol country to maintain international registration.
Example 1: Scope of Rights
• Facts: Client wants to register the mark WIDGET in Europe for shoes
and cars. Client filed U.S. application for shoes and cars. U.S.
registration issues only for shoes.
• European application filed within priority deadline using:
Direct Priority Option
maintain priority for
shoes and cars
Madrid Protocol
limited to shoes
• European application filed after priority deadline using:
Direct Option
Madrid Protocol
no priority, but can file
for shoes and cars
no priority and limited
to shoes
Example 2: Cost Comparison
• Client wants to obtain registrations in the
following countries in one class, with a
priority claim to U.S. application:
co
Mexi
da
Cana
NZ
ralia
Aust
ay
Norw
a
Chin
rea
S. Ko
n
Japa
ce
Fran
Italy
den
Swe
lux
Bene
UK
Systems
Available
CTM
a a a a a
Madrid a a a a a a a a a a
National a a a a a a a a a a a a a
Option 1: Direct Priority
(CTM + National)
co
Mexi
da
Cana
NZ
ralia
Aust
ay
Norw
a
Chin
rea
S. Ko
n
Japa
ce
Fran
Italy
den
Swe
lux
Bene
UK
CTM
a a a a a
Madrid a a a a a a a a a a
National a a a a a a a a a a a a a
$2500(CTM) + $2000(JP) + $1000(KR) + $600(CN) + $1500(NO) +
$1000(AU) + $1000(NZ) + $1200(CA) + $1200(MX)
Estimated Cost = $12,000*
* Estimated Cost only includes out-of-pocket expenses (i.e., government and agency
fees, foreign agent fees).
Option 2: Combination
(Madrid + Direct Priority)
co
Mexi
da
Cana
NZ
ralia
Aust
ay
Norw
a
Chin
rea
S. Ko
n
Japa
ce
Fran
Italy
den
Swe
lux
Bene
UK
CTM
a a a a a
Madrid a a a a a a a a a a
National a a a a a a a a a a a a a
$3550(Madrid) + $1000(NZ) + $1200(CA) + $ 1200(MX)
Estimated Cost = $6,950*
* Estimated Cost only includes out-of-pocket expenses (i.e., government and agency
fees, foreign agent fees).
Option 3: Combination
(Madrid + CTM + Direct)
co
Mexi
da
Cana
NZ
ralia
Aust
ay
Norw
a
Chin
rea
S. Ko
n
Japa
ce
Fran
Italy
den
Swe
lux
Bene
UK
CTM
a a a a a
Madrid a a a a a a a a a a
National a a a a a a a a a a a a a
$2500(CTM) + $2184(Madrid) + $1000(NZ) + $1200(CA) + $1200(MX)
Estimated Cost = $8,084*
* Estimated Cost only includes out-of-pocket expenses (i.e., government and agency
fees, foreign agent fees).
Strategy Considerations
• No one-size strategy: each filing option has pros and cons.
• Weigh cost & efficiency against importance of broad
protection in each individual country.
• Consider ways to avoid restricted goods/services worldwide.
– Multi-nationals file outside United States with broad
description and U.S. application through Madrid Protocol.
– But consider risks (e.g., tax implications, etc.).
• Consider using a combination of available filing options
depending on where the client wants protection and which
foreign markets are most critical.
Useful Resources
• WIPO at www.wipo.int/madrid/en
– Madrid fee calculator (in Swiss francs, no USPTO fees).
– Review “Guide to the International Registration of Marks
under the Madrid Agreement and the Madrid Protocol.”
– Searchable online databases:
• ROMARIN at www.wipo.int/romarin
• Madrid Express at www.wipo.int/ipdl/en/madrid
• USPTO at www.uspto.gov/trademarks/law/madrid/index.jsp
– Online filing system for international applications.
– Review Trademark Manual of Examining Procedure
(TMEP), Chapter 1900 “Madrid Protocol.”
Basic Glossary of
Madrid Protocol Terminology
• basic application: original application filed in a qualified home
forum office of applicant (e.g., USPTO for U.S. applicant)
• basic registration: home forum registration that issues from
basic registration (e.g., USPTO registration).
• international application: filed through Madrid Protocol, and is
based on an active, basic application or registration.
• international registration: issues from the international
application.
• designated country: any country that is a party to Madrid
Protocol for which an applicant requests an extension of
protection under the Madrid Protocol.
• subsequent designation: request by holder of an international
registration for an extension of protection to additional Madrid
Protocol countries after international registration issues.
Contact Information
T.J. Romano
tromano@khpatent.com
Kolisch Hartwell P.C.
520 S.W. Yamhill Street, Suite 200
Portland, Oregon 97204
(503) 224-6655