In November 2003, the United States joined many other countries in signing a treaty called the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Protocol”). The United States Patent and Trademark Office (“PTO”) has just recently created forms and procedures to implement the Protocol in the United States. The Madrid Protocol is designed to provide a more efficient method for an owner of a trademark to register its trademark in a number of foreign countries.
At present, 66 countries are signatories to the Madrid Protocol, and the procedures outlined below can be used to obtain the registration of trademarks in each of these countries.
While the changes brought about by the Madrid Protocol are largely procedural, the Protocol does eliminate some of the expenses and difficulties typically encountered in attempting to obtain trademark registration under prior methods. Prior to the Madrid Protocol, if a USA based company desired to register its trademarks in different countries, it would be required to obtain local counsel in each of the countries, prepare an application to be filed in each nation’s trademark office, and pay fees for such actions in the local currency of each of the various countries. If a trademark was registered, it would then be necessary to track the status of that registration in each country to determine when renewals or other actions needed to be taken, which time periods could vary nation-by-nation.
The Madrid Protocol allows a USA based company to submit, for international registration, the same information it used in a prior trademark application that was presented to the PTO for a registration in the USA. The applicant may also base its international application on a prior trademark registration issued by the PTO. The information must be submitted electronically on a special International Application form. After receipt, the PTO confirms that the information in the International Application is identical to the previously filed US application (or registration), then “certifies” and transmits the International Application to the International Bureau of the World Intellectual Property Organization. The International Bureau, located in Geneva, Switzerland, acts as the centralized agency for the administration of the Madrid Protocol.
Upon receipt, the International Bureau confirms that the International Application is in proper form. At this time, the applicant must also pay a fee to the International Bureau, which amount varies depending on how many countries, and in which countries, the applicant seeks to register their trademark. The fee must be paid in Swiss Francs, but this is the only foreign currency that is required in the application process. The International Bureau then transmits a copy of the International Application to the various countries where registration is sought. Each country then has a maximum of 18 months to approve or deny the trademark. If no response is received by the International Bureau in that time, the International Application is approved for the country that has not responded.
If a country denies an application, then the applicant deals directly with that country in any continued administrative process. If this occurs, it may be necessary for the applicant to obtain local counsel to pursue the application.
However, if the application is granted by a country, a record is made in the office of the International Bureau. The registration so obtained must be honored by the courts of the granting country the same as any other trademark registration issued in that country. Accordingly, even though an applicant files one International Application, the various member nations to the Madrid Protocol may approve or deny registration of the trademark for their particular country. However, once registration is allowed in one or more countries, the renewal of the trademark, and other administrative actions that may arise such as transfers of the mark, are treated as being related to one “international registration.” The international registration is effective for 10 years, and may be renewed for successive 10 year periods if so desired.
Overall, the Madrid Protocol allows the trademark applicant to simplify the process of obtaining trademark registrations in foreign countries, and makes it much easier to track the applications through the review process and upon registration. A company’s trademarks can be its most valuable assets, and utilization of the procedures provided by the Madrid Protocol can make the processing of protecting trademarks in foreign countries less cumbersome and expensive.