It's a New World in Trademarks: The U.S. Joins The Madrid Protocol

What is the Madrid Protocol?

Beginning on November 2, 2003, U.S. trademark owners can take advantage of a streamlined international trademark registration system known as the Madrid Protocol. The Madrid Protocol is a treaty managed by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. Multi-country trademark applications can be filed in one office, in one language, and in one currency. As of November 2, 2003, there will be approximately sixty member countries that accept these applications. The resulting trademark registrations in these countries last for ten years and, with one filing, can be renewed for ten years.

At last, the United States will join all of the major economies of the world except Brazil, Canada, and Mexico, as a Madrid Protocol member. While the United States formally joined the other Protocol members on August 2, 2003, the effective date of U.S. participation is November 2, 2003, the date when the U.S. Patent and Trademark Office (USPTO) will begin accepting Madrid filings. Now that the U.S. has joined, other countries are expected to follow. A list of current member states by region appears below.

U.S. participation in the Madrid Protocol is related to increasing globalization in several ways, including the recognition that U.S. businesses value their trademarks on a global level and the remarkable concession that English is in widespread use in international commerce. Whether in Beijing, Moscow, or Paris, trademark applications may be filed in English. Also, the Madrid Protocol builds on other treaties that attempt international harmonization in intellectual property protection, including the North American Free Trade Agreement (NAFTA) and the General Agreements on Tariffs and Trade (GATT).

Contrast With International Trademark Protection Today

Currently, U.S. trademark owners typically must register their foreign marks on a country-by-country basis, except for a few multi-country filing systems. The largest multi-country filing system currently is the European Community Trademark system (CTM), which includes fifteen member countries, next year to be expanded to twenty-five. Country-by-country filing and the present multi-country filings are time consuming and expensive because they require referral through U.S. trademark counsel to foreign trademark lawyers to file and if necessary, to translate applications to the local language. The cost varies from $1,000 to $3,000 per mark per country just for the initial filing, and more for multi-country filings.

The Madrid Protocol will cut those initial filing costs by about 50%, to about $500 to $1,500 per application per country. Under the Madrid Protocol, a U.S. business must file an electronic application, in one office (the USPTO), in one language, and in one currency. So no translation or foreign agent fees are incurred for the initial filing. Likewise, once the registration issues, it may be renewed or assigned (but only to an owner from or in a member country) with one filing and no translation or foreign agent fees.

While the Madrid Protocol eliminates the need for multiple foreign trademark lawyers at the trademark application filing and renewal stages, it does not eliminate the need for them completely, depending on the application. Under the Madrid Protocol, each member country applies its own examination and opposition standards to applications. For example, a trademark owner whose application is refused registration in the United Kingdom and opposed in France will need to consult U.K. and French lawyers. Thus, while the Madrid Protocol streamlines and centralizes many aspects of foreign filing, it remains at heart a country-bycountry registration system. However, the good news is that according to statistics kept by WIPO about 80% of International Registry applications are ultimately registered. (The International Registry includes both Madrid Protocol filings and filings from the Madrid Agreement, a sister treaty which the United States has not joined.)

Whether to Use the Madrid Protocol

While the Madrid Protocol offers a cheaper, faster, and easier way to obtain trademark protection in many foreign countries, it may not always be the best solution.

Before deciding whether to use the International Registry, U.S. trademark owners will want to balance the generally narrower goods and services recitals in U.S. (and International Registry registrations based on the U.S. registrations) with the relatively broad descriptions permitted elsewhere in country-by-country applications. U.S. trademark owners will also want to balance the potential for loss of trademark rights due to differences between U.S. and foreign practice with respect to particular marks, because the international extension registrations are dependent on the U.S. home country registration. There are still many subtle yet important differences from country to country with respect to acceptance of trademark registration applications.

For U.S. trademark owners who want European protection, a CTM registration may be simpler and cheaper than the Madrid Protocol system, based on a number of factors, including the number of European countries in which protection is sought.

Impact on U.S. Trademark Owners

The implementation of the Madrid Protocol will impact all U.S. trademark owners, even those who never file outside the United States. Because filings will be cheaper and easier under the Madrid Protocol, foreign trademark owners will likely file more U.S. applications. This could make it more difficult to register marks in the United States. To assess whether a proposed mark is available for use, U.S. trademark owners may more frequently decide to search the International Registry and key foreign trademark registers before adopting a mark, even if that mark will only be used in the United States. In addition, many watching services will be broadened to cover the International Registry.

Action Steps for U.S. Trademark Owners

1. Foreign Trademark Protection. Starting November 2, 2003, begin utilizing the International Registry for foreign filings, where appropriate. But keep in mind that there may be some situations where a U.S. trademark owner might still prefer country-by-country registrations, including the following situations:
2. 1. Whenever your international use is in non-member countries (e.g., Canada and Mexico, until they become members.).
   2. Your international use will be confined to Europe or other areas with multi-country registration systems, which may lower costs to comparable levels, depending on factors that we can discuss with you.
   3. Your U.S. registration (country of origin) is in danger of being refused, opposed, or canceled, or may need to be amended (there is no amendment permitted of International Registry registrations), or has a description of goods or services that is exceedingly narrow.
   4. Your designated country registration is likely to encounter substantial refusal or opposition. Any cost savings could be reduced in this situation.

2. Searches and Watches Should Cover the International Registry now. Because of the growth of the Madrid Protocol system, trademark owners should now consider a search (and ongoing watching services) of the International Registry and possibly other foreign trademark registers. In the future there will be more potential for conflict between U.S. and non-U.S. marks, since there will be more foreign marks protected in the U.S., and vice versa.
3. 
   
4. For our Canadian and Mexican clients with U.S. operations (or those businesses from other non-Madrid Protocol countries), consider using the Madrid Protocol if your international trademarks are owned by an affiliate that is either domiciled in the U.S. or that has a "real and effective" business in the U.S.
5. 
   
6. Update your global brand protection strategy. Discuss the benefits and limitations of the Madrid Protocol with your trademark attorney and revise your global brand protection strategy to maximize those benefits.
7. 
   

Madrid Protocol Members as of September 25, 2003 (by region)
(current EU member; pending EU member*)

* Malta is also a pending EU member, but not a member of the Madrid Protocol.