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INTELLECTUAL PROPERTY A PUBLICATION OF THE TECHNOLOGY GROUP OF DORSEY & WHITNEY LLP UPDATE It’s a New World in — The U.S. Joins The Madrid Protocol

What is the Madrid Protocol? U.S. participation in the Madrid lawyers to file and if Beginning on November 2, 2003, Protocol is related to increasing necessary, to translate applications to U.S. trademark owners can take globalization in several ways, including the local language. The cost varies advantage of a streamlined the recognition that U.S. businesses from $1,000 to $3,000 per mark per international trademark registration value their trademarks on a global level country just for the initial filing, and system known as the Madrid Protocol. and the remarkable concession that more for multi-country filings. English is in widespread use in The Madrid Protocol is a treaty The Madrid Protocol will cut those international commerce. Whether in managed by the World Intellectual initial filing costs by about 50%, to Beijing, Moscow, or Paris, trademark Property Organization (WIPO) in about $500 to $1,500 per application applications may be filed in English. Geneva, . Multi-country per country. Under the Madrid Also, the Madrid Protocol builds on trademark applications can be filed in Protocol, a U.S. business must file an other treaties that attempt international one office, in one language, and in one electronic application, in one office (the harmonization in intellectual property currency. As of November 2, 2003, USPTO), in one language, and in one protection, including the North there will be approximately sixty currency. So no translation or foreign American Free Trade Agreement member countries that accept these agent fees are incurred for the initial (NAFTA) and the General Agreements applications. The resulting trademark filing. Likewise, once the registration on Tariffs and Trade (GATT). registrations in these countries last for issues, it may be renewed or assigned ten years and, with one filing, can be Contrast With International (but only to an owner from or in a renewed for ten years. Trademark Protection Today member country) with one filing and no At last, the United States will join all Currently, U.S. trademark owners translation or foreign agent fees. typically must register their foreign of the major economies of the world While the Madrid Protocol eliminates marks on a country-by-country basis, except Brazil, , and Mexico, as the need for multiple foreign trademark except for a few multi-country filing a Madrid Protocol member. While the lawyers at the trademark application systems. The largest multi-country filing United States formally joined the other filing and renewal stages, it does not system currently is the European Protocol members on August 2, 2003, eliminate the need for them completely, Community Trademark system (CTM), the effective date of U.S. participation is depending on the application. Under which includes fifteen member November 2, 2003, the date when the the Madrid Protocol, each member countries, next year to be expanded to U.S. and Trademark Office country applies its own examination twenty-five. Country-by-country filing (USPTO) will begin accepting Madrid and opposition standards to and the present multi-country filings are filings. Now that the U.S. has joined, applications. For example, a trademark time consuming and expensive other countries are expected to follow. owner whose application is refused because they require referral through A list of current member states by registration in the and U.S. trademark counsel to foreign region appears below. opposed in will need to consult www.dorsey.com Vol. 3 — No. 7 U.K. and French lawyers. Thus, while number of factors, including the c. Your U.S. registration (country of the Madrid Protocol streamlines and number of European countries in which origin) is in danger of being centralizes many aspects of foreign protection is sought. refused, opposed, or canceled, or filing, it remains at heart a country-by- may need to be amended (there is Impact on U.S. Trademark Owners country registration system. However, no amendment permitted of the good news is that according to The implementation of the Madrid International Registry registrations), statistics kept by WIPO about 80% of Protocol will impact all U.S. trademark or has a description of goods or International Registry applications are owners, even those who never file services that is exceedingly narrow. ultimately registered. (The International outside the United States. Because d.Your designated country Registry includes both Madrid Protocol filings will be cheaper and easier under registration is likely to encounter filings and filings from the Madrid the Madrid Protocol, foreign trademark substantial refusal or opposition. Agreement, a sister treaty which the owners will likely file more U.S. Any cost savings could be reduced United States has not joined.) applications. This could make it more difficult to register marks in the United in this situation. Whether to Use the Madrid Protocol States. To assess whether a proposed 2.Searches and Watches Should Cover While the Madrid Protocol offers a mark is available for use, U.S. the International Registry now. cheaper, faster, and easier way to trademark owners may more frequently Because of the growth of the Madrid obtain trademark protection in many decide to search the International Protocol system, trademark owners foreign countries, it may not always be Registry and key foreign trademark should now consider a search (and the best solution. registers before adopting a mark, even ongoing watching services) of the if that mark will only be used in the Before deciding whether to use the International Registry and possibly United States. In addition, many International Registry, U.S. trademark other foreign trademark registers. In watching services will be broadened to owners will want to balance the the future there will be more potential cover the International Registry. generally narrower goods and services for conflict between U.S. and non-U.S. marks, since there will be more recitals in U.S. (and International Action Steps for Registry registrations based on the U.S. U.S. Trademark Owners foreign marks protected in the U.S., and vice versa. registrations) with the relatively broad 1.Foreign Trademark Protection. descriptions permitted elsewhere in Starting November 2, 2003, begin 3.For our Canadian and Mexican clients country-by-country applications. utilizing the International Registry for with U.S. operations (or those foreign filings, where appropriate. U.S. trademark owners will also want businesses from other non-Madrid But keep in mind that there may be to balance the potential for loss of Protocol countries), consider using some situations where a U.S. trademark rights due to differences the Madrid Protocol if your trademark owner might still prefer between U.S. and foreign practice with international trademarks are owned country-by-country registrations, respect to particular marks, because by an affiliate that is either domiciled including the following situations: the international extension registrations in the U.S. or that has a “real and effective” business in the U.S. are dependent on the U.S. home a.Whenever your international use is country registration. There are still in non-member countries (e.g., 4.Update your global protection many subtle yet important differences Canada and Mexico, until they strategy. Discuss the benefits and from country to country with respect to become members.). limitations of the Madrid Protocol with acceptance of trademark registration your trademark attorney and revise b. Your international use will be applications. your global brand protection strategy confined to Europe or other areas to maximize those benefits. For U.S. trademark owners who want with multi-country registration European protection, a CTM registration systems, which may lower costs to may be simpler and cheaper than the comparable levels, depending on Madrid Protocol system, based on a factors that we can discuss with you. www.dorsey.com 2 Vol. 3 — No. 7 Madrid Protocol Members as of September 25, 2003 (by region) (current EU member; pending EU member*)

Western Europe Eastern Europe Africa/Middle East Austria Czech Republic Iraq (effective 12/25/03) Belgium Estonia Kenya Denmark Hungary Lesotho Finland Latvia Morocco France Lithuania Mozambique Germany Poland Sierra Leone Greece Slovakia Swaziland Ireland Slovenia Zambia Italy Albania Asia/Pacific Luxembourg Armenia Netherlands Belarus Bhutan Portugal Bulgaria China Spain Former Yugoslav Republic of Macedonia Dem. People’s Rep. of Korea Sweden Georgia Japan United Kingdom Republic of Moldova Mongolia Cyprus (effective 11/4/03) Romania Republic of Korea Iceland Russian Federation Singapore Liechtenstein Serbia and Montenegro Monaco Turkey Caribbean Norway Turkmenistan Antigua and Barbuda Switzerland Ukraine Cuba North America United States (effective 11/2/03) * Malta is also a pending EU member, but not a member of the Madrid Protocol.

For further information regarding our intellectual property practice, THE AUTHORS please contact any group leader.

Gary Duvall Trademark & Group Dorsey & Whitney offices that offer Seattle Elizabeth Buckingham, Minneapolis intellectual property services 206.903.8700 612.343.2178 Denver [email protected] [email protected] Des Moines Patent Group London A partner with the Trademark, Lee Osman, Denver Minneapolis Copyright and Brand 303.629.3434 Missoula [email protected] Management Group, Gary’s practice New York emphasizes franchise, Internet, trademark, Franchise & Distribution Group Palo Alto and licensing law. Nancy Smith, San Francisco San Francisco 415.544.7017 [email protected] Seattle Elizabeth Buckingham James Hermsen, Seattle Washington, D.C. Minneapolis 206.903.8852 612.343.2178 [email protected] [email protected] IP Litigation Group For change of address or subscription: Ralph Taylor, Washington, D.C. A partner and chair of the Toni Byard, Minneapolis 202.442.3562 [email protected] Trademark, Copyright and [email protected] 612.340.7824 Brand Management Group, Liz’s practice emphasizes trademark, copyright, unfair competition and domain name law.

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