US mark owners may now apply for international marks

The United States has become a party to the Madrid Protocol, thus enabling trademark applicants domiciled in (i) the United States to obtain an international registration covering multiple countries through a single application, and (ii) other countries party to the Madrid system to apply for international marks designating the United States.

Since November 2, US applicants or owners of a US trademark registration have been able to request the US Patent and Trademark Office (PTO) to file an application for an international registration with the World Intellectual Property Organization (WIPO). Although the PTO initially proposed that applications for international marks be filed electronically, it has suspended this requirement while technical issues are resolved.

The basic costs, in addition to the filing fee for a US application, will be:

  • the PTO's fee of $100 per class for certifying an international trademark application;

  • WIPO's fee of Sfr653 covering up to three classes and Sfr73 for each additional class; and

  • individual country fees of Sfr73 or the fee normally charged to apply for registration in that country.

The International Bureau of WIPO will ensure that the formalities of an application have been complied with and then forward the application to the trademark offices in the countries where the applicant is seeking protection for substantive examination. WIPO must be notified of a refusal of registration or opposition within 18 months. If, after 18 months, there has been no objection to the mark, it will be deemed registered as of the date of the international registration in all of the countries where the application has been accepted, unless the application has been opposed by a third party. Once protection is granted in one country, the international registration has a term of 10 years. New countries may be added to the registration.

The protocol offers potential advantages for US applicants including:

  • easier expansion of trademark protection in foreign countries. It will be possible to seek protection in any or all of the 60 member states of the protocol by filing a single application;

  • an expedited examination process. As described above, objections by an examiner or a third party must be sent to WIPO within 18 months; and

  • lower registration and maintenance costs. Unless an objection is raised by an examiner or a third party, it will not be necessary to retain a foreign associate. Renewals, assignments, name changes and so on can also all be done with a single filing.

The value of these potential advantages may be reduced by initial search costs in individual countries, and the need to respond to office actions and to defend oppositions.

Potential disadvantages include the following:

  • Description of goods and services is limited. The goods or services covered by an international registration cannot be broader than the national registration upon which it is based. Since the PTO often requires a narrower specification of goods and services than other countries, a US applicant seeking to extend protection to a country signatory to the protocol may obtain a narrower registration than it would under a national filing.

  • There is a risk of a central attack. An international registration is dependent on the home registration for five years after the international registration has been issued. Therefore, if the home registration is cancelled within this five-year period, the international registration will no longer be valid. However, it will be possible to maintain the registrations in the extension countries by notifying the local trademark offices within three months of the invalidation of the international registration and paying the additional filing fee required by each country.

  • An international registration is not a unitary right. Because an international registration is a bundle of national registrations, third parties can cancel the registration in countries where the mark has not been in use within the time period required by law. This is in contrast to a Community trademark registration, where use in one country is sufficient to protect the mark in all of the countries that are part of the European Union.

In summary, while the protocol offers potential benefits, an international registration may not be the most effective way to obtain protection for trademarks and service marks in all circumstances.

Finally, wholly apart from seeking an international registration abroad, those interested in US marks should bear in mind that applicants domiciled in any of the member states will be able to extend protection of their marks to the United States. Therefore, once the protocol is implemented by the PTO, a search of US marks should be expanded to include a search of the international trademark register.

Besides the United States, other countries, such as South Korea and Albania, have joined the protocol in the past year, and Iran and Cyprus are scheduled to join later this year. In addition, the EU Council of Ministers has approved entry of the European Union to the international system.

Susan Progoff, Fish & Neave, New York

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