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Washington, DC 20015
(202) 274-0214

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McNeely, Hare & War LLP
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Princeton, NJ 08540
(609) 240-2533

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International Trademark Filing Under the Madrid Protocol

Implementation of the Madrid Protocol in the United States (US), which occurred in November 2003, introduced a new central trademark filing system to U.S. trademark owners interested in protecting their trademarks abroad.  Also, foreign trademark owners can add the U.S. as a designated country in their Madrid Protocol trademark applications or in connection with existing Madrid Protocol trademark registrations.

The international trademark registration obtained through the International Bureau of WIPO is not a single unified right or any right at all in and of itself.  It facilitates filing in member countries on the basis of a single application, in a single language, filed by a person or company that is a national of a signatory to the Madrid Trademark Protocol (Contracting Party), or a legal entity that is domiciled or has a real and effective industrial or commercial establishment in the originating country.

There are additional advantages as well, such as a single fee paid in a single currency.  Because of the simplicity of the trademark filing procedure, there is no need to instruct foreign representatives in each country that one designates for protection. Only in the case of an official action in a designated country must one obtain legal representation to prosecute the application.  Further, the process results in one trademark registration with one number and one renewal date. Renewals, changes in ownership or address, or limitations to the goods or services are likewise effected by one filing and one fee administered by the International Bureau. There are also cost savings in post trademark registration activities. Renewal of the ten year term, and other changes to the trademark registration, are accomplished in a single step with a single fee. This is a tremendous savings on the time and effort spent on maintenance and the recordation of transfers.

During its first five years, the international trademark registration is dependent on the basic home or original trademark application or trademark registration. If the basic trademark application or trademark registration is amended in any way, so is the international trademark registration and all of the extensions to designated countries. If the basic trademark application or trademark registration fails, is withdrawn or cancelled, so is the international trademark registration and all of its extensions. However, there is a three month window in which the trademark owner has the right to transform the failed international trademark registration into national trademark applications or trademark registrations in the designated countries, all of which will retain the original filing date and any priority claimed. The resulting national trademark applications are subject to a further examination under the national trademark laws or rules pertaining to the country concerned, and the payment of a further national trademark fee. However, after the expiry of the five year term after application, the international trademark registration becomes independent of the basic trademark application or trademark registration.

Because of this dependency, a U.S. trademark owner must consider the required level of specificity of the USPTO in describing the goods and services. If the identification in the basic trademark application is amended to a narrower, more definite statement, the identifications in all of the designated countries will also be so amended. Thus, broader protection may be available by filing national trademark applications.

If an international trademark registration is not refused by the national office of a designated country, the protection of the trademark is the same as if the trademark had been registered directly with the national office as of the date of the international trademark registration. The International Bureau of WIPO does not examine the application on absolute or relative grounds, for substantive matters such as distinctiveness or prior rights. It requires compliance with only minimum formalities before notifying the international trademark registration to each national office designated by the applicant. If the trademark applicant files within six months of the basic trademark application, a timely request for Paris Convention  priority may be made. No further certification is necessary to establish a priority filing date in designated countries.

The date of the international registration is the date of filing the basic application at the national office of origin, provided that the application is received, without a deficiency, by the International Bureau within 2 months of the filing date. Otherwise, the date will be the date when the last of any missing elements reach the International Bureau.

Since designations of protection to additional member countries may be made after registration, the system facilitates the expansion of trademark rights as the trademark owner expands into new markets.  Thus, i t is prudent for those conducting clearance searches in the U.S. to include the trademark records on the WIPO database. This may alert the potential applicant to possible conflicting marks bearing earlier filing dates, or priority filing dates, that have not yet been notified to the USPTO and entered into the USPTO database.

The Madrid Protocol provides an effective and well-established means of obtaining multiple foreign trademark registrations at less cost. Understanding the system and its limitations, however, is crucial to developing the best strategy for the international registration of important marks.