Madrid Protocol THE MADRID PROTOCOL

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks - the “Madrid Protocol” is an international trademark treaty which has been adopted by the United States and provides US businesses with the opportunity to obtain international trademark protection with minimized administration and cost.

The Madrid Protocol allows a US trademark applicant or registrant to file a single trademark application with the United States Patent and Trademark Office (USPTO) and have that application serve as a basis for an International Registration extended for the same goods/services to any of the more than 70 member countries of the Madrid Union designated by the applicant.

Any trademark owner with an application (the "basic application") or registration at the USPTO and "who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the United States" may file an international application through the USPTO.

Among the advantages to a US trademark owner or applicant utilizing the Protocol rare that renewals, assignment recordals, changes of name and/or address of an International Registration may be effected by filing one document with the International Bureau in Geneva, Switzerland.

In order to obtain an international registration, an applicant submits the application to the USPTO with the required fees. The USPTO then reviews the application and "certifies" to the International Bureau that the application is in conformity with the "basic" US application or registration.

Once the International Bureau has received the application, it will review the application to ensure it complies with the requirements of the Madrid Protocol. If the requirements are met and the fees paid, the International Bureau will register the mark and publish it in the WIPO Gazette of International Marks (WIPO Gazette).

The Bureau will then notify the individual country trademark offices to which the International Registration has been extended. These trademark offices will, in turn, examine the application using the same standards as they would if it were an application filed directly with that countries trademark office. The offices have a maximum of 18 months to object to registration of the extension of the application to their country. If the trademark office of a respective country fails to object within this time, the mark will automatically be granted protection in that country. This is particularly interesting with respect to certain African, Asian and South American countries wherein the trademark application process can take years. How and whether the laws of these jurisdiction are changed due to the Protocol will be interesting to follow.

If the trademark office in one of the designated countries issues a provisional refusal to register the mark, US counsel will most likely work with counsel in that foreign jurisdiction in an attempt to overcome the refusal.

Once an applicant has obtained registration in those countries in which an extension was obtained, the applicant can then later decide to further extend the International Registration to other countries by filing a further extension to other countries with the USPTO.

An International Registration lasts for ten years, and may be renewed through a single filing thereafter.

Importantly, however, for the first five years the International Registration is completely dependent on the US application or registration. If at any time within those five years the US application or registration is rejected, successfully opposed, abandoned or otherwise cancelled, the rest of the International Registration will fall - meaning that the registrations in each of those countries to which the International Registration was extended will also be cancelled. After the five year period, the International Registration is no longer dependent on the US application or registration.

One important downside to this, or upside to a potential opposer, is that during the initial five year period, a company holding conflicting trademark rights can choose to "centrally attack" the US application or registration and, if successful, can effectively eliminate the extension of the trademark to the other designated extension countries. If the trademark holder is successfully attacked, however, the trademark holder has the opportunity to re-apply within three months of the cancellation of the International Registration in each foreign jurisdiction while retaining the priority date of the International Registration. After the five year period, the International Registration can only be attacked under the respective trademark and other laws of the specific extension countries.

The Madrid Protocol, together with other trademark treaties and conventions, such as the European Community Trademark (which may also be extended to an International Registration) are steps forward for the US in international trademark protection. However, while the Madrid Protocol reduces costs and administrative fees, counsel experienced in international trademark law is needed to effectively utilize the various complexities of the system.

The law Offices of Michael D. Stewart can assist you in these and a variety of other issues. You may contact us at:

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Michael D. Stewart, Esq.