International Trademark Registration – Madrid Protocol and Direct Filing

Trademark registration can extend beyond the US.  Protection is territorial – a US trademark registration provides no protection beyond the borders of the US.  As a result, companies often seek to register their trademarks in countries where their business requires it.  Foreign trademark protection can normally be obtained through two methods; each has its own respective benefits and drawbacks.

First option: The Madrid Protocol

The Madrid Protocol is a centralized system helpful for filing a number of foreign trademark registration applications.  The World Intellectual Property Organization, or WIPO, administers the Madrid Protocol system from Geneva.  Many countries around the world, including the US, participate in the Madrid Protocol.

International trademark protection sought through the Madrid Protocol proceeds from a US trademark registration application.  When a trademark application is filed with the United States Patent and Trademark Office, or if there is a registration already on the books, a Madrid Protocol international registration application can be launched off the so-called base application.  The international application is filed the USPTO, validated, then sent to WIPO in Geneva.  The applicant designates the countries in which it would like to file trademark applications and pays fees for each country and for WIPO, and WIPO sends the international application to the designated countries.  Communications about the progress of the applications in each country are then directed to the trademark attorney via WIPO.

The Madrid Protocol has a number of benefits.  First, it is a centralized process, so many things occur at the same time.  Each foreign application carries the same timeline, so each must be renewed at the same time, simplifying paperwork and calendaring.  Communication flows through WIPO making it much easier to keep track of a large number of foreign filings.

Second, it can be a cheaper way to proceed on several applications.  If the foreign trademark offices accept the applications and register the trademarks after receiving the applications, then fees associated with hiring foreign counsel to file the trademark application are saved.  If the trademark is highly unique, or for some reason the applicant believes there won’t be resistance in the foreign trademark office, this can be a significant reason to file through the Madrid Protocol.

Third, it is a relatively quick process.  Because the initial work can be done through the USPTO based on the US application, delays involving foreign counsel, translations, and across-the-globe time differences can be avoided.

The Madrid Protocol does have drawbacks, however.  First, some countries allow for broader descriptions of the goods or services with which a mark is used than the US does.  The Madrid Protocol, however, requires that the goods and services description in the international application be no broader than that in the base application.  Thus, if one country would have allow a broader description for a particular trademark in a way that would have been commercially significant, it may be prudent not make a Madrid Protocol filing.

A Madrid Protocol is also vulnerable to what is called a “central attack.”  The individual foreign trademark registrations remain dependent on the US application for five years.  If the US application or mark is abandoned or narrowed, each foreign trademark is affected in a similar way.  Thus, the US base application for a Madrid Protocol filing can be attacked in an effort to limit or eliminate the foreign rights at the same time.  There is a process for nationalizing each foreign application and making them independent if such attack occurs, but it can be expensive.

If an application does encounter issues at a foreign trademark office, then the costs of filing directly with foreign counsel are not really saved.  Foreign trademark offices require that local counsel prosecute the trademark application.  If problems arise, foreign associates must be contacted to help with the application.  Thus, the foreign costs that would have spent in a direct filing are then spent in prosecution; though these likely would have been spent in either case.

Lastly, not all countries are participating members.  If the country in which protection is sought isn’t a Madrid Protocol member, then the process simply cannot be used and a direct foreign filing must be made.

Second Option: Direct Foreign Filing

A direct foreign filing uses local counsel in each country in which protection is sought to assist in filing trademark applications.  Communication then moves from the client to the US trademark attorney to the foreign attorney to the foreign trademark office and back.

If you have any questions about either method of pursuing international trademark protection, please contact trademark attorney Tom Galvani at 602-281-6481 to talk with him or set up an free initial consultation.