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 International Filing System. The Madrid
Protocol is an international agreement establishing a trademark and
service mark filing system. As of June 26, 2007 it applies in 73
countries, including for example, the United Kingdom, the European
Community, Japan, and China. Notable countries not participating are
Canada and Mexico and the countries of South America. A web
page giving the full list of countries may be accessed from the World
Intellectual Property Organization (WIPO), which like the PCT
for patents, administers the Madrid Protocol filings. If you want a
trademark in all the participating countries, expect the filing fees and
other costs for a single class to add up to about $300,000.
U.S. Applicants. U.S. residents must
first apply for U.S. Trademark
registration. Afterwards, that U.S. applicant can separately apply
for Madrid Protocol registration in foreign countries. This is
required because the United States cannot be designated by a United States
applicant under the Madrid Protocol. If a Madrid Protocol
application is filed within six months of the U.S. application filing
date, then the applicant can claim the U.S. filing date to take precedence
over any foreign filings occurring after that U.S. filing date.
The Benefits of the Madrid Protocol. If
there is a need for multiple nation trademark coverage, the Madrid
Protocol could save money: when renewal time comes for the
trademarks at the 10 year anniversary, only a single renewal fee is
required. This could save considerably over country by country
renewals.
Under the Madrid Protocol, a person needing trademark protection in
more than one country files an application with the U.S. Patent and
Trademark Office designating the countries where protection is
desired. This application is equivalent to an application of the
same mark made directly in each of the countries designated by the
applicant.
The Madrid Protocol Application Process in the United
States. Upon filing a Madrid Protocol application, the U.S.
Patent and Trademark Office (USPTO) checks four conditions: that the
applicant named in the Madrid Protocol application is the same as the
applicant named in the basic application or registration; that the
mark in the Madrid Protocol application is the same as in the basic
application or registration; that any indications (e.g. color, sound) in
the Madrid Protocol application are the same as in the basic application
or registration; and finally, that the goods and services in the Madrid
Protocol application are "covered by" the goods and services in
the basic application or registration. The Madrid Protocol
application must pass these checks or the application fails at that point.
If the application passes these checks, then the USPTO forwards the
application to WIPO. WIPO then determines if the application has the
correct form. If so, WIPO issues an international registration
number. WIPO then forwards the application to each country
designated in the application. Each such country then independently
examines the application for compliance with their laws. Any country
can grant or deny the application for applicability in their country,
based on their laws.
The Disadvantages of the Madrid Protocol.
For a U.S. applicant, the advantages can be more than offset by the
disadvantages, especially when only a few countries will be
designated.
- The U.S. has much narrower definitions for goods and services
applicable to a mark. These definitions must be used because the
home country must provide protection of the mark or the entire Madrid
Protocol registration is canceled. So if one is seeking
protection in other countries that are not constrained by these narrow
definitions, for example in the European Community, the protection
provided by a Madrid Protocol application will be much narrower than
might otherwise be obtainable by direct application.
- A large U.S. company which previously filed under the Madrid
Protocol, may not subsequently decide to base its operations outside
the United States. If it does so, all the Madrid Protocol
registrations become invalid.
- If the mark is subsequently opposed, withdrawn or canceled in the
United States within the first five years after the filing date,
registrations in all the other nations are also canceled. In
such an event, the applicant has 3 months to submit another
application (and fee) in each of the countries in order to preserve
the filing date of the original Madrid Protocol application.
- Major U.S. trading partners, Canada, Mexico and the countries of
South America, are not parties to the Madrid Protocol.
Filing Costs.
Each country designated has a separate fee that must be paid in addition
to the international fees. All are payable in Swiss francs.
There are three components of the international fee: The basic
international fee is about 653 Swiss francs; plus a complementary fee
of 73 Swiss francs for each country designated; plus a supplementary fee
of 73 Swiss francs for each classification claimed. The national
fees typically vary from about 200 to about 500 Swiss francs.
However, the European Community fee is 2,229 Swiss francs. See Yahoo's
currency converter. Attorney fees for filing an international
trademark application are $500.
According to the American Intellectual Property Law Association 2007
Economic Survey, the median charge in 2006 for filing for an international
trademark is $700. In addition, the median post-filing prosecution
costs are $1,000.
U.S. Trademark.
For many, protection will be sought only where the the major market for
the goods and services is expected. See this Law Firm's Trademarks
page for information on a U.S. application.
Foreign Client
Services. Attorney Louis Ventre, Jr. provides four different
services to foreign clients:
- Addressing a Refusal of Protection. If the United States
Patent and Trademark Office refuses protection to a Madrid Protocol
foreign applicant, then he will respond to a refusal of protection.
- Replacing an Earlier U.S. Registration with the Madrid Protocol
Registration. The United States permits registered trademark
holders to replace an earlier U.S. registration with the registration
via a subsequently filed Madrid Protocol registration. This is
referred to as an "extension of protection." The
advantage is that the foreign holder of the international registration
can efficiently administer the trademark registration in a single
place, reducing the amount of paperwork needed to keep up
registrations in many countries.
- Transforming an Extension of Protection to the United States into a
U.S. Application. If WIPO cancels an international registration
which designates the United States, then the foreign registrant must
seek individual registration in the United States within 3 months of
that cancellation. Attorney Louis Ventre, Jr. will electronically
file the necessary papers to transform the international application
into an ordinary U.S. application. Attorney fees for this
service are $500.
- Filing Statements of Use or Excusable Non-Use. Madrid Protocol
foreign mark-holders must file a statement of use or excusable non-use
between the fifth and sixth years after the date of registration in
the U.S. Such statement must also be filed between 9-1/2 years
and the end of each ten-year period after the date of
registration. Failure to file a required statement results in
registration cancellation. Attorney fees for this service are
$400.
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This file last modified 08/29/07.
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