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International
Trademark Filings Under the Madrid Protocol
The
U.S. recently became a party to the Madrid Protocol
whereby U.S. applicants can file international trademark
applications. The Madrid Protocol system gives a trademark
owner the ability to have his or her mark protected
in several countries by simply filing one application
with a single trademark office, in one language, with
one set of fees.
An
international registration produces the same effects
as an application for registration of the mark made
in each of the countries designated. If protection
is not refused by the trademark office of the designated
country within a specified period of time (up to 18
months), the mark is protected as if it had been registered
with that office.
The
Madrid Protocol system also simplifies the subsequent
management of the mark, since it is possible to record
subsequent changes (such as a change in ownership
or a change in the name or address of the holder),
or to renew the registration through a single procedural
step with the International Bureau (IB)
of the World Intellectual Property Organization
(WIPO) in Geneva, Switzerland.
Unfortunately,
there are some potential drawbacks to the Protocol.
When filing an individual application in many foreign
countries, trademark registrations are allowed with
broad goods and services covering entire classes or
product categories. Under the Protocol, however, applications
are limited to the specific description of goods or
services in the U.S. application and registration.
Filings
under the Madrid Protocol are also limited in geographical
scope. There are presently 57 member countries. No
Central and South American countries have joined,
nor have Canada and Mexico. While Europe is well represented,
the Protocol may not be the best option for securing
trademark protection in Europe. Presently, it is possible
to register a trademark in all fifteen countries of
the European Community through a
single filing and examination by the Community Trademarks
Office. A Protocol filing covering the same fifteen
European countries would entail examination in fifteen
separate jurisdictions.
In
order to utilize the Madrid Protocol system, the trademark
owner must (a) have a regular U.S. application on
file or issued U.S. registration, and (b) be a national
of, have a domicile in, or have a real and effective
industrial or commercial establishment in the United
States. The Madrid Protocol application is filed with
the U.S. Patent and Trademark Office with a designation
of an extension of the basic U.S. application/registration
to other countries. If the application is granted
by the International Bureau, an “international
registration” is issued.
The
mark and the owner of the international application
must be the same as the mark and the owner of the
basic U.S. application or registration. Fees must
be paid to both the U.S. Patent and Trademark Office
and to the International Bureau. After the application
has been filed with the U.S. Patent and Trademark
Office, it is examined for procedural formalities
and forwarded to the International Bureau, which,
after an examination of its own, will issue the international
registration.
Registration
by the International Bureau does not mean that the
mark is automatically granted protection in the designated
countries. The International Bureau forwards the registration
to each country that has been designated by the applicant
for trademark protection. Each country examines the
application according to its local laws, publishes
the mark for opposition in that country’s trademark
journal, and protection is then granted on a country-by-country
basis. If a designated country does not act on the
application within a set period of time (maximum of
18 months), then protection of the mark in that country
is automatically established. However, if the country’s
trademark office refuses the application or if there
is an opposition, then foreign associate counsel is
needed to deal with the issues raised.
The
international registration has a 10 year life span
and may be renewed for additional 10 year periods.
A single renewal date is applicable to all designated
countries that grant it protection.
For
the first five years, the international registration
is completely dependent on the U.S. basic application
or registration. Thus, during the first five years
of the life of the international registration, if
the U.S. basic application or registration is refused,
withdrawn, canceled or restricted, in whole or in
part, then the International Bureau will cancel the
international registration. There is, however, a three-month
grace period in which the trademark owner can convert
the international registration into separate national
applications in the countries of choice. These separate
applications will be deemed to have the same filing
date as the international application. After the five
year period has ended, the international registration
becomes independent of the basic U.S. application
or registration.
It
is difficult to estimate the cost to be charged by
the International Bureau without having all of the
facts in hand (number of classes, nature of the mark,
number of countries, etc.). For example, the International
Bureau may charge between $2,000.00 and $2,300.00
should eight common countries be designated. By comparison,
if all countries were designated, the international
fees would amount to approximately $9,100.00 to $9,300.00.
These amounts, of course, are dependent on fluctuating
foreign exchange rates.
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