By Mark H. Miller

The United States began effective participation in the Madrid Protocol (MP) on November 2, 2003, which marks what could be considered the most significant development in U.S. trademark law in more than a decade. The primary function of the MP is to provide a centralized filing system for simultaneous application of a trademark registration and maintenance in member countries. Most industrialized countries are either members or committed to membership including the European Community states, Japan, and Australia.

Who Can File?

A qualified owner of a US trademark application or of a US trademark registration may file an application for MP international registration. To qualify, the applicant must simply:

• Be a national of the United States;
• Be domiciled in the United States; OR
• Have an industrial or commercial establishment in the United States.

What Are the Benefits to You?

U.S. trademark owners benefit from cost savings when a mark is sought to be protected through the MP as compared to the conventional country-by-country process which is expensive and procedurally confusing. The MP process is simple administratively, relatively fast, provides for a central office, and has lower registration costs. A U.S. trademark owner can now file a single international application, in one language, pay one fee using a single currency, to seek registrations having one renewal date in all MP countries.

Procedurally Speaking

The MP is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, however, application is not made directly to WIPO. The U.S. applicant submits the international application through the United States Patent and Trademark office (USPTO) which forwards it to WIPO after certifying certain information. WIPO issues an international registration certificate with registration number and filing date, and notifies the trademark offices of all designated countries. Each designated country examines the application as a national trademark application under its own laws and practices. That is, a national office can refuse protection of a mark, under certain time constraints, on the same grounds (such as lack of distinctiveness, etc.) that apply if an application had been filed directly as a national application. The MP provides strict time limits (a maximum of 18 months) for any application refusals. If the national office does not notify WIPO of a refusal within the specified time period, the mark automatically becomes protected in that country.

Are There Any Drawbacks?

A U.S. trademark owner’s use of the MP could result in a narrower scope of protection for its goods and services compared to direct national filings. Under the MP, the registration’s protection can only be as broad as the coverage allowed by the host country. Our USPTO requires descriptions of goods and services which are narrower than what other countries require. Many other countries allow very broad descriptions. Consequently, broader protection may be obtained via individual national filings.

Additionally, the MP does not permit any changes to the form of a registered mark through amendments, even though many member countries allow minor changes if the registration had been obtained via a direct national filing.

Further, A U.S. trademark owner might also find his assignability limited. An MP registration can only be assigned to an assignee of an MP member country. For example, since Mexico is not a member, an assignment to a company in Mexico may not be possible. Few Latin American countries are members.

The Bottom Line

Trademark owners who file a significant number of foreign applications should have a thorough understanding of the pros and cons of the available registration systems including the MP and other centralized systems, such as the regional European Community Trademark system and direct national filings. A counsel experienced with international trademark registration can assist in determining which approaches best meet your company’s particular objectives.

Should your company need such assistance, please contact the author at mmiller@jw.com or any Jackson Walker attorney at 1.866.922.5559.

The opinions expressed are those of the author and do not necessarily reflect the views of the firm, its clients, or any of its or their respective affiliates. This article is for informational purposes only and does not constitute legal advice.