International Trademark

Marks via the Madrid Protocol

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 100 Swiss francs for each country designated; plus a supplementary fee of 100 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 the search and filing an international trademark application in one classification are $900.

According to the American Intellectual Property Law Association Economic Survey of 2013, the median charge in 2012 for a clearance search and subsequent filing for an international trademark is $1,700.  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 $600.
  • 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 $500.

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