David A. Weinstein, Esq. > Published Articles

The New Trend in International Intellectual Property Law: The Madrid Protocol

By David Weinstein, Esq.

On November 2, 2002 the United States enacted the Madrid Protocol Implementation Act, which took effect on November 2, 2003, making the United States a participating country in the Madrid Protocol. The significance of the United States' participation in the Madrid Protocol lies far beyond the benefits obtained by participation in this international treaty. The passage of this law signals the United States' further acceptance of its role in the global economy and its recognition of the need to protect US intellectual property not only within the United States, but throughout the world.

The Madrid Protocol relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), is an international treaty that allows a trademark owner to seek registration of their trademark in any of the countries that have joined the Madrid Protocol, by the filing of a single "international application" and the payment of the appropriate fees associated with said application to the International Bureau of WIPO (International Bureau). As of February 2004, there were 62 countries participating in the Madrid Protocol. These countries include all of the countries of the European Union, Japan, Australia, China, and various countries throughout Eastern Europe (the former Soviet Union) and Africa. It should be noted that the protocol does not provide for a single registration for all of the participating countries, rather it facilitates the filing of international trademark applications simultaneously with multiple participating countries. The administration and management of the Madrid Protocol is centralized in the World Intellectual Property Organization (WIPO) which is located in Geneva Switzerland. Once approved, international registration of a trademark is valid for ten years from the date of the filing and may be renewed for an additional ten year time period with the payment of the renewal fee to the International Bureau.

There basic requirements for qualifying to file under the Madrid Protocol in the United States. The first is that the trademark owner has an application filed in or a registration issued by the United States Patent and Trademark Office(USPTO). The send requirement is that the trademark applicant must be a United States national or be domiciled in the United States, or have a real and effective industrial or commercial establishment in the United States.

The fee's associated for filings for protection under the Madrid Protocol are broken up into two categories: fees to be paid to the USPTO and fees to be paid to the International Bureau. The USPTO charges $100.00 per class, if the international application is based on one basic US application or registration, and $150.00 per class, if the international application is based on more than one basic US application or registration. The USPTO also charges a transmittal fee of a $100.00 per class for any subsequent designations. The fees to be to paid to WIPO must be paid to the International Bureau in Swiss Francs. The fees vary depending on the type of international application being submitted but are generally 653 Swiss francs (presently approximately $513.12) where no reproduction of the mark is in color and 903 Swiss Francs ((presently approximately $709.57) where any reproduction of the mark is in color. In addition, the applicant must pay WIPO individual national fees based on the country in which the applicant is applying for protection. For the reader's reference, I have attached to this article the most current national fee schedule provided by WIPO.

The general procedure for filing for trademark protection under the Madrid Protocol in the United States is as follows:

• An International application is submitted to the United States Patent and Trademark Office, presently on paper, and is accompanied by a certification fee.
• The USPTO reviews the international application and makes sure it meets the requirements of 37 C.F.R. §7.11(a), then the USPTO will compare the trademark information contained in the international application with the information in the U.S. basic trademark application or registration to make certain it is the same . Within two (2) months of the filing date, if the USPTO finds the documents contain the same trademark information, it will certify the document and forward the international application to the International Bureau. The USPTO then sends a confirmation notice to the applicant of the forwarding of the documents to the International Bureau.
• Upon the application being forwarded to the International Bureau, the International Bureau will review the international application to determine whether it meets the Madrid Protocol filing requirements. If the requirements are met and the fees paid, the International Bureau will then register the mark, publish it in the WIPO Gazette of International Marks (WIPO Gazette), send a certificate to the international applicant, now called "holder of the international registration", and notify the Offices of the Contracting Countries designated in the international application. If there are deficiencies in the application, the International Bureau advises the applicant of the deficiencies. The applicant then has three (3) months to cure them. If the deficiencies are not cured within the three (3) month deadline, the application is then deemed abandoned by the International Bureau.
• The International Bureau will notify each country in which protection has been requested in the International Application. Each designated country has the right to accept or refuse granting protection for the trademark on the same grounds as if the applicant would have filed directly with that country. But, unlike if the applicant had filed for protection directly with the country, the time period to reject or refuse protection for an international application is strictly governed by the Madrid Protocol. The time limit for a country to notify their refusal to grant protection for the trademark is generally between twelve to eighteen months, unless the refusal is based on an opposition filed with the country to the mark contained in the International Application. In the case of an objection filed in a participating country for registration of the trademark, the time period can exceed 18 months. In the case of a refusal, the applicant has the right to directly contest with that country's certifying said refusal as if they had applied directly with that country's office in the first place.
• In order for a country to issue a refusal of a particular international application, it must notify the International Bureau within the requisite time period (usually eighteen (18) months). The failure of the participating country to issue a refusal within the requisite time period will require the participating country to grant protection of the trademark the same as if it had been registered directly with the certifying authority of that participating country.

It should be noted that for the first five years from the date of the international registration, an international registration remains dependent on the actual trademark registered or applied for in the country of origin which in this case would be the United States. This is known as the dependency period and is time period in which a trademark is most susceptible to a centralized attack. If the basic registration ceases to have effect, whether through cancellation following a decision of the USPTO or a court, through voluntary cancellation or through non-renewal, within this five-year period, the international registration will no longer be protected and may be cancelled. Similarly, where the international registration was based on an application in the United States, it will be cancelled if that application is refused or withdrawn within the five-year time period, or if the registration resulting from that application ceases to have effect within that period. However, within three months of the date of said cancellation the applicant may file individual national applications in all of the countries covered by the international registration and retain the original filing date of the now cancelled international registration. After the expiration of the five year time period, the international registration becomes independent of the basic registration or basic application with USPTO.

There are distinct advantages and disadvantages for filing for Trademark Protection under the Madrid Protocol versus filing for trademark protection in each individual country. The advantages of the Madrid Protocol as compared with filing for trademark protection in each individual country is that you can file a single application, in English, with the USPTO, and be given protection for your trademark in multiple countries. In addition, there is significant cost savings for not having to file separate applications in each individual country that you are seeking protection of your trademark in. There are also some of the disadvantages of filing a trademark application under Madrid Protocol. The trademark owners open themselves up to easier centralized attack on their trademark. In addition, there are specific limitations on the ability to assign the trademark registrations. Finally, the scope of protection accorded to the US trademark applicants who register their trademarks via the Madrid Protocol will be limited to the basic international application or registration. Therefore, the decision as to whether or not to file for trademark protection by use of the Madrid Protocol should be made on a case by case basis.

The Madrid Protocol represents a vital and important step by the United States to simplify the process by which a United States company can now protect its valuable intellectual property, in the form of a trademark, in countries throughout the world.