The United States – Three Years on by Jason M

K THE MADRID PROTOCOL – AN INDUSTRY VIEW The United States – three years on By Jason M. Vogel of Kilpatrick Stockton he United States joined the Madrid Union are Canada, Mexico, most of Latin Protocol on 2 November 2003. America, New Zealand, South Africa, TAlthough adoption by U.S. trademark Taiwan, Hong Kong, Malaysia, the owners of this multinational trademark Philippines, Indonesia, Thailand, Israel, India registration system was perhaps a bit slow and Pakistan, although there are efforts initially, the U.S. now represents the third underway in many of these countries to join. largest user of the system, with over 2800 The process of filing for an International international applications filed in 2005, or 8.5% Registration (“IR”) under this system can be of the total of 33,565 applications filed that tricky. As an initial matter, the Madrid year.1 This article, will explain the nuts and system is only available to individuals or bolts of how the system works, and provide legal entities that are nationals of, are some practice pointers for deciding when to domiciled in, or have a real and effective use the system and how to avoid common commercial or industrial establishment in, a pitfalls that are endemic to the system. country that is a member of the Madrid The “Madrid Protocol Relating to the Union. Such country in which the Madrid Agreement Concerning the international applicant qualifies for International Registration of Marks,” was participation in the Madrid system is adopted in June 1989 as an outgrowth of an referred to as the applicant’s “Country of 1891 trademark treaty entitled the “Madrid Origin.” For U.S. companies, the Country of Agreement Concerning the International Origin will typically be the United States. Registration of Marks”. Both the Madrid Before filing an application for an IR, the Protocol and Madrid Agreement, as the two applicant must already own one or more treaties are commonly called, remain in effect trademark registrations (under the Protocol, on a complementary, side-by-side basis.2 The registrations or applications) in its Country countries and multi-country organizations of Origin for the mark and goods or services belonging to one or the other, or both, of for which international registration is these treaties are referred to as the Madrid sought. These applications or registrations Union. At present, the Madrid Union are referred to as the “basis” for the IR. Once includes 79 trademark jurisdictions, 56 of a “basic” registration or application is which belong to the Madrid Agreement, and secured, the applicant files an international 70 of which belong to the Madrid Protocol.3 application with the trademark office in its AUTHOR The United States is a member of the Madrid Country of Origin, which is designated as Jason Vogel is Counsel in Kilpatrick Protocol only, not the Madrid Agreement. the “Office of Origin”. In the international Stockton’s Intellectual Property application, the applicant may request Practice Group in the New York office. How the Madrid System works protection in as few, or as many, of the His practice is focused on Essentially, the Madrid Agreement and countries as are desired that are members of international trademark portfolio and Protocol establish a centralised one-stop the same treaty (the Agreement or Protocol) conflict management. His experience shop for trademark filing in the countries as the Country of Origin. In other words, includes counseling for complex and multi-country trademark systems that international applications originating in a multijurisdictional trademark conflicts, are signatories of the treaties. The Madrid Madrid Protocol-only country, such as the clearance, prosecution, enforcement system is administered by the International United States, may only be extended to other and licensing for leading companies in Bureau of the World Intellectual Property countries in the Madrid Protocol. Conversely, the entertainment, financial services, Organization (“WIPO”), a branch of the applications originating in a Madrid apparel, pharmaceutical and food and restaurant services industries. United Nations. The members of the Madrid Agreement-only country, such as Egypt, may Union include practically all of the countries only be extended to other countries in the of Europe as well as the European Union Madrid Agreement. Meanwhile, itself; the Pacific Rim countries of Australia, international applications originating in Japan, China, South Korea, Singapore and countries belonging to both treaties, such as Vietnam; all of the former Soviet Republics; France, may be extended to the entire 79 and a number of African and Middle Eastern jurisdictions of the Madrid Union. countries. Notably absent from the Madrid The Office of Origin examines the 38 | WORLDextra: INTA Supplement | May 2007 www.ipworld.com K THE MADRID PROTOCOL – AN INDUSTRY VIEW international application to certify that the objections or oppositions are notified to WIPO portfolio of national trademark registrations for formalities for international filing are met, within this timeframe, the extension will be a single mark in 69 countries could cost including that the owner of the basic deemed granted, and the owner of the IR will US$30,000 to $40,000 or more. application or registration is the same as the have secured the same degree of protection When these factors are coupled with the owner of the international application, and given to holders of national registrations in administrative efficiency of filing a single that the goods and services covered by the that country. If, on the other hand, an objection application rather than having to coordinate international application are not broader or opposition is notified to WIPO within this the filing of 69 national applications, the total than those covered under the basic period, the extension will remain pending until cost savings for a filing program can be very application or registration. If everything is in such matters are resolved by the applicant in dramatic indeed. order, the Office of Origin transmits the accordance with local practice. international application to WIPO, which Disadvantages of the Madrid System conducts further examination to ensure that Advantages of the Madrid System a) Dependency and Central Attack its filing requirements are met and that the The Madrid Protocol consolidates and There are several potentially significant goods and services are classified correctly. streamlines the registration process because disadvantages of the Madrid System, Also, in the case of an application governed protection in multiple countries can be however. Perhaps the largest disadvantage by the Protocol, WIPO translates the obtained merely by filing one application, in arises from the “dependency rule”. Under application into the three official languages - one language, with one fee payment, in one Article 6 of both the Madrid Agreement and English, French and Spanish (all Madrid currency. Unlike national applications filed in Protocol, an IR remains dependent on the Agreement applications must be filed in many countries, there are no translation or basic application or registration for the first French). In the event that WIPO determines documentary legalization requirements. The five years following registration of the IR, that there are any defects in the international resulting IR has a single ten-year term, such that any limitation or invalidation of the application, it will communicate a Notice of resulting in a single renewal deadline, and basic application or registration during this Irregularity to the applicant, which must be may be renewed with a single renewal period will result in the equivalent limitation resolved within two months through application. Assignments, mergers, changes of or invalidation of the IR. This rule can have amendments or arguments submitted by the name, licenses and other transactions affecting serious consequences under the Madrid applicant via the Office of Origin. the IR may be centrally recorded with WIPO Agreement, because an invalidation of the Once the formalities examination is rather than country-by-country recordal as is basic registration will result in the complete, WIPO publishes the resulting IR in required for standard national registrations. unrecoverable invalidation of the entire IR, the WIPO Gazette of International Marks, issues Additionally, IRs may be easily expanded at including all national extensions. The harsh a Certificate of Registration to the holder of any time following registration to include impact of this rule has been tempered the mark and communicates the registration to additional countries through the filing of a somewhat under the Madrid Protocol the trademark offices of the designated “Subsequent Designation” with WIPO. because, in the event of invalidation of the extension countries. The term “International Perhaps the most significant advantage of basic registration, the holder of an IR Registration” is something of a misnomer in the Madrid System, however, is the cost governed by the Protocol is given the right that the issuance of the IR does not, in itself, savings, which result in part because it is to “transform” the national extensions into create any enforceable trademark rights in the unnecessary to utilise local agents in the regular national applications without a loss extension countries. Instead, upon receipt of extension countries provided that no objection of priority. However, transformation of an IR notification from WIPO of the

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