On November 2, 2003 the Madrid Protocol Implementation Act (the "Act") went into effect. The Act permitted the U.S. to join the Madrid Protocol, a procedural agreement which allows trademark registration in all of the member countries through use of a single standardized application. The Act has greatly changed domestic and international trademark registration for American businesses.
The Act provides many benefits to American trademark owners. The Madrid Protocol removes many formalities of international registration by providing that one application can be filed with the U.S. Patent and Trademark Office ("PTO") in a single language with an accompanying fee to register a mark in any number of designated member countries. The World Intellectual Property Organization ("WIPO") does not examine the application for substantive qualifications and instead relies on the national trademark office of each member country. Provided that there is no refusal to grant protection to a mark by any of the designated member country trademark offices, the protection of the mark is the same as if the application was filed directly with each national office. The Madrid process reduces the time and expense associated with filing separate applications in each foreign country; removes costs associated with establishing a subsidiary in a member state in order to hold rights in a registration in that country; can eliminate the need for local counsel in each country in which registration is sought; and simplifies the subsequent renewal of and modifications to registration of an international trademark. The Madrid Protocol also permits a registrant to designate additional member countries after registration in order to expand the trademark protection of a mark in new markets.
The date of international registration will be the filing date of the underlying national application with the PTO provided that the international application is received by WIPO within two months of filing, and that the application has no missing elements. If a deficiency exists, the filing date is the date on which the complete application is submitted to WIPO. The applicant must then rely on the PTO to forward the application and risks loss of priority if that forwarding is not timely. Both as a preventative measure and to facilitate such forwarding, the PTO requires that international applications be filed using its Trademark Electronic Application System.
Once an application is filed in the U.S., the PTO and each member country national trademark office will examine the WIPO application for substantive qualifications. Under the Madrid Protocol, the PTO and non-U.S. national trademark offices each have eighteen months in which to examine the application and each must notify WIPO if it refuses to grant protection to the mark. If any of these national trademark offices refuse to protect a mark, that office must provide a statement of all of the grounds of its refusal. Each office must also notify WIPO if the possibility of an opposition exists.
U.S. participation in the Madrid Protocol will affect the amount of time the PTO takes to examine a trademark application. The time to register a WIPO application is typically twelve months or less in a majority of the member countries. The domestic U.S. registration process can often take upwards of two years. Under the Madrid Protocol, the PTO must complete its international application examination within eighteen months of filing.
The Act may create difficulties with respect to the identification of goods and services in U.S. trademark applications. A U.S. trademark owner will need to consider the desired level of specificity of the goods and services description in its U.S. application. The PTO requires that goods and services be stated with particularity. In contrast, the Madrid Protocol requires a less restrictive standard, namely, that goods and services be described in precise terms. The Madrid standard will create problems both for U.S. applicants who must carry a narrower description of goods and services in their international registration under the U.S. standard, and for foreign applicants who may need to narrow their identification of goods and services in order to meet U.S. requirements. Thus, U.S. applicants may want to consider filing separate national applications in each member country in order to achieve broader protection internationally.
The Act may also prove problematic if a national trademark registration undergoes a central attack such as an opposition or cancellation action. During the first five years after registration, the international registration is dependent upon the underlying national registration. During that time, if the national registration lapses or is withdrawn, revoked, or canceled, the international registration is similarly affected. Upon cancellation of the underlying national registration, the registrant has three months to convert the international registration into separate national applications in each of the designated countries thereby allowing the registrant to preserve its original filing date.
Since foreign trademark owners will be able to designate the U.S. in their Madrid Protocol applications or add the U.S. in connection with existing Madrid Protocol registrations, U.S. trademark owners will benefit from expanding their trademark searches to include WIPO trademark applications. This search will prevent most rejections of trademark applications based on likelihood of confusion because of earlier filed foreign applications.
Note that a search may not reveal all possible conflicts. An earlier filed conflicting mark may not be discovered if the search is conducted between the time it takes for an application to be filed at a national office before it is received by WIPO. In addition, there is also a level of uncertainty with respect to translations. The PTO requires that all applicants provide an English translation of all non-English marks before a mark can be registered. Under the Madrid Protocol, a translation is not required. If a translation is not provided by an applicant or if it is provided after the PTO conducts its official search for a conflicting mark, there is the possibility of duplicate registration of marks.
Please consult with legal counsel to determine if your intellectual property would benefit from international registration under the Madrid Protocol or on a national basis.
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