Intellectual Property Law
 

International Trademark Registrations Come To America
By Scott W. Pink

S. PinkInternational trademark protection has long been an expensive and cumbersome process for U.S. companies. Trademark protection had to be obtained a country-by-country basis, with a separate trademark filing and prosecution in each country's trademark office. U.S. companies would often find themselves blocked in foreign countries by the prior filing of that same mark by a competitor.

International trademark registration has now become much easier since the U.S. joined the Madrid system of international registration of marks in 2003. The Madrid system of international registration is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol Relating to the Madrid Agreement, which became effective December 1, 1995.

The Madrid system provides for centralized international trademark filing. Any trademark owner in a country that is a party to the Madrid Protocol or Madrid Agreement can seek an international registration by filing a single trademark application. The international registration by itself does not create trademark protection outside of the country in which the application was first filed. However, it does enable the trademark owner to use that single registration as the basis for seeking protection in each of the member countries, without having to file a separate registration in each country.

Other countries have been using this or similar systems since as early as 1970, but the United States only joined the system in 2003 with the passage of the Madrid Protocol Implementation Act of 2003. Except for the European Community trademark registration, which has been around for about ten years, U.S. entities entity for the first time are able to file for trademark protection in many countries by way of a single application and by payment of a single fee. As of November 2003, 61 countries were parties to the Madrid Protocol; each country is called a "Contracting Party."

To file under the Madrid Protocol, a U.S. trademark owner must meet the following qualifications:

(1) Be a national of the United States;

(2) Be domiciled in the United States; or

(3) Have a real and effective industrial or commercial establishment in the United States.

A qualified trademark owner must first either file a U.S. application, called a "basic application," or a U.S. registration, called a "basic registration," with the United States Patent and Trademark Office ("PTO"). The trademark owner can then file for an "international" trademark registration under the Madrid Protocol by filing a corresponding "Madrid" application with PTO. An international application must be filed through the Trademark Electronic Application System ("TEAS") at the PTO's web site at www.uspto.gov.

An international application must be for the exact same mark as the U.S. application or registration and include a list of goods/services that is identical to or narrower than the goods/services in the basic U.S. application or registration. The international application may be based on more than one PTO application or registration, provided the mark and the owner are the same for each basic application and/or registration.

Once the Madrid application is filed, the PTO then certifies that the information in the international application is the same as the U.S. application or registration. The international application is then sent to the International Bureau (IB) of the World Intellectual Property Organization (WIPO), which will examine the application for compliance with the Madrid Protocol requirements. If the requirements are not met, the IB will send a notice of irregularity. Such notices must be responded within certain time limits to keep the application alive. If the requirements are met and the required fees paid, the IB will then register the mark, publish it in the WIPO Gazette of International Marks and send a certificate to the applicant. The applicant is now the owner of an international registration, which lasts for 10 years (provided the "home" country registration is not cancelled within the first 5 years) and is renewable for successive 10-year terms.

However, the international registration is not enforceable by itself in any other country. The applicant must designate either in the initial application or subsequent to that application, the additional countries in which it wishes to obtain a registration for mark. A designation is a request by the holder of an international registration for an extension of protection of the registration under the laws of the designated countries.

The trademark office of each designated country will then examine the application for registrability under that country's particular trademark laws. There are time limits on that examination. The trademark office of the designated country must either approve or enter a refusal of an extension of protection no later than 18 months after the designation. If a designated country does not notify the application of a refusal within this time period, the mark is automatically protected in that country.

There are advantages and disadvantages to the international registration process. The major benefit is the potential savings in costs and time. By using the international registration scheme, you can avoid filing multiple applications and ongoing maintenance is handled through the centralized registration scheme. For example, only a single renewal fee and document need be filed to cover all affected registrations under the Madrid Protocol. In addition, you can more easily take advantage of the priority filing date of the "home" country application, which can be useful in disputes over priority of ownership.

The primary disadvantage is that if the "home" country application is ultimately refused or is cancelled within the first five years, the entire international registration becomes invalid. This could be avoided if separate trademark applications had been filed in each individual country. In addition, the international registration scheme does not allow an applicant to tailor applications to address issues in particular countries. It will some times be necessary to have a different class of goods, or even a slightly different version of the mark in each country.

On the whole, however, the availability of the Madrid Protocol is a great benefit for U.S. trademark owners and will greatly facilitate the filing and prosecution of international trademark registrations. For further information on the Madrid Protocol and international trademark registrations, you can check out www.uspto.gov or http://www.wipo.int/madrid/en/.

Scott W. Pink is an attorney with the Intellectual Property and Transactions Group of Gray Cary Ware & Freidenrich LLP in Sacramento and former Vice President and General counsel for Prima Publishing in Roseville, California. He has served as chair or been on the board of directors of local, state and national intellectual property organizations, including Chair of the Sacramento and San Francisco Bar Intellectual Property Sections and Chair of the National Intellectual Property Committee of the American Corporate Counsel Association.

 
March / April 2004