New England Biz Law Update
The Madrid Protocol.
It sounds like a spy novel, but it is actually an international treaty that facilitates trademark protection in most of the world’s major economies. As of Nov. 2, 2003, the United States became one of some 60 Madrid Protocol “member” countries, and this promises to streamline foreign registration procedures for U.S. trademark owners.
Going global with your brand is challenging enough from a marketing standpoint without the hassle of securing legal protection. Fortunately, by joining the Madrid Protocol, the U.S. has lowered some of the barriers to international trademark protection. Many U.S. applicants will find that the Protocol system is more flexible and cost-effective than country-by-country trademark registrations.
Historically, U.S. companies doing business abroad have had to manage the expense and logistical challenges of pursuing and maintaining multiple trademark registrations in individual countries. This has required hiring local trademark agents and translators, using local application forms, paying official fees in local currency, and sometimes waiting years for action on an application.
Not surprisingly, these hurdles have deterred many trademark owners from pursuing foreign registrations that would help to secure their rights. Although individual country registrations remain an option, many U.S. trademark owners will now find it advantageous to use the centralized “international application” process available under the Madrid Protocol (“Protocol”).
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Eligible Applicants. An international application may be filed by any person or company who is domiciled or has a “real and effective industrial or commercial establishment” in, or who is a national of, a country that is a Protocol member. In addition to the U.S., these countries currently include Australia, China, Japan, the Russian Federation, and most European nations. Notable non-members include Canada, Mexico, Taiwan, and Brazil. However, additional countries and the E.U. are expected to join in the near future.
Home Country Registration Or Application. To use the Protocol system, an eligible applicant must have either a registration or a pending application in the U.S. (or other “home country”) for the same goods or services for which the applicant seeks to register its mark abroad.
If you have already registered or applied to register your mark in the U.S., you may file an international application with the U.S. Patent and Trademark Office (“PTO”) designating the additional Protocol member countries in which you seek registration. Alternatively, you may file a new international application with the PTO and simultaneously apply for registration in the U.S. and designated member countries.
The International Registration. Once you file your international application, the PTO will forward it to the World Intellectual Property Organization (“WIPO”). If the application complies with formalities, WIPO will issue a certificate of International Registration and publish your registration in the WIPO Gazette of International Marks.
WIPO will also simultaneously send your application to the national trademark office of each country you designated in your application. Each national trademark office will then evaluate your application as if you had filed directly with that office and will be entitled to refuse protection for your mark in its territory. WIPO, in turn, will record any such refusals in the International Registry.
If you wish to respond to objections in a particular jurisdiction, you will need to engage local counsel at that stage. Ultimately, your international registration will be effective only in those countries in which your application is not refused or successfully opposed. Any issues raised in one jurisdiction, however, will not affect the fate of designations in other jurisdictions.
Advantages Of An International Registration
Centralized Filing. Centralized filing offers cost savings and efficiency, at least in the near term. It is still advisable to conduct a broad-based trademark search to clear your mark for use and registration outside the U.S.
However, you may now file a single international application in English with the PTO, make a single payment in U.S. currency, and simultaneously apply to register your mark in any Protocol member countries where you are doing, or intend to do, business.
Accelerated Review. The Protocol requires that the national trademark offices approve or refuse your application within 18 months of filing unless a local opposition is pending. This strict timeline guarantees that U.S. applicants will receive expedited responses, even from those countries that have traditionally required several years to process applications.
Centralized Maintenance. With a single filing, you may designate additional member countries for trademark protection at any time, even after registration. You may also renew your registration, record changes in ownership information, and assign your mark in some or all of the designated countries.
Disadvantages of an International Registration
Dependency. The most serious disadvantage of an international Registration is its vulnerability to “central attack.” For the first five years after issuance, an international registration is dependent upon the validity of the home country application or registration. Thus, if your basic application or registration expires or is restricted, abandoned, or cancelled within the five-year period, your international registration will also be cancelled (or restricted).
The dependency period may last even longer than five years if the restriction, abandonment, or cancellation results from an action that began within the five-year period.
These potentially drastic results are mitigated by the ability to “transform” the international registration into national applications within three months of cancellation and preserve the original priority date of the international registration. However, this option will result in some duplication of cost and effort.
Assignment Restrictions. Another limitation is that an international registration may be assigned only to a person or entity that meets the Protocol eligibility requirements. Thus, for example, if you sell your business to a Canadian company that does not have operations in a Protocol country, you cannot easily transfer the International Registration with the rest of the business.
Scope of Protection. The scope of protection may also be of concern. Whereas the U.S. registration system requires relatively narrow and specific descriptions of the goods or services associated with a registered mark, some other countries are not as strict. Therefore, in using a U.S. registration or application to obtain an international registration, a U.S. applicant may sacrifice the broader protection that would be available through an individual country filing.
Andrew J. Ferren is a director in the Corporate Group at Goulston & Storrs. He handles a wide range of business matters for established and emerging companies, non-profit organizations, closely-held businesses, and individual entrepreneurs. He also helps to coordinate the firm’s trademark and copyright practices. Mr. Ferren can be reached at [email protected]. Elizabeth C. Myers is a member of the Corporate Group at Goulston & Storrs. She focuses her practice on mergers & acquisitions, privacy/security issues and intellectual property matters. She can be reached at [email protected].
