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UPDATE: International Trademark Law – The Madrid System

 

By Vicenç Feliú

 

Vicenç Feliú is the Associate Dean for Library Services and Associate Professor of Law at the Villanova University School of Law.  He graduated from Franklin Pierce Law Center (now the University of New Hampshire School of Law), Concord, NH, with a JD and a LLM in Intellectual Property and from the University of Washington, Seattle, WA, with a MLIS with an emphasis in Law Librarianship.  He is the author of several articles on the Civil Law in Louisiana and on Legal Research Pedagogy.

 

Published January 2014

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Table of Contents

1.     Introduction

2.     The Madrid Agreement

3.     The Madrid Protocol

4.     Overlapping Membership

4.1. Procedure for an International Application

4.2.  Fees

5.     Date of Registration

6.     Searching for an International Mark

7.     Recent Print Sources

8.     Recent Journal Articles

9.     Conclusion

1.     Introduction

Registration of trademarks in multiple jurisdictions around the world is governed by two independent treaties—the Madrid Agreement (the Agreement) and the Madrid Protocol (the Protocol). Despite its name, the Protocol is a separate treaty and not a “protocol” to the Agreement.  Together, the Agreement and the Protocol are known as the Madrid System for the International Registration of Marks (the Madrid System).  States party to the Agreement and/or the Protocol and organizations party to the Protocol are referred to collectively as Contracting Parties.  Together, they constitute the Madrid Union, which is a Special Union under Article 19 of the Paris Convention. The Madrid System is a centrally administered system (by the International Bureau of the World Intellectual Property Organization, WIPO) for obtaining a bundle of trademark registrations in separate jurisdictions, creating in effect a basis for an "international registration" of marks.  This guide is intended to highlight the resources and important issues encountered in using the Madrid System for the international registration of marks.

 

2.     The Madrid Agreement

The Agreement was established in 1891 for the purpose of providing a mechanism that would allow for a single and inexpensive international trademark registration and to eliminate the need for filing, prosecuting or maintaining separate registrations in multiple countries.  Registration of a mark under the Agreement provides for the legal equivalent of registration in member countries designated by the mark owner.  If the trademark office of the designated country does not communicate a refusal of registration to WIPO within 12 months (extended to 18 months under the Protocol), the mark will have the same protection as registered national marks in that country.   The Agreement also provides for a simplified renewal system since registration to renew and chances to the original registration affecting all the countries included in the registration can be made through a single filing with WIPO.

 

Despite the advantages of registration through the Agreement the U.S. and several other major countries (e.g. Australia, Denmark, Finland, Greece, Iceland, Ireland, Japan, Norway, Republic of Korea, Sweden, the United Kingdom (click here for a list of members to the Agreement and the Protocol)) never joined the Agreement because of perceived defects in its structure.  These perceived defects included issues such as the requirement for registration in the home country before protection of the mark could be awarded, unlimited risk of “central attack” to the mark, a short examination period, fees that are lower that the corresponding fees in the home country’s trademark offices, and limitations on assignability.

 

3.     The Madrid Protocol

The Protocol was adopted in 1989 to correct the perceived deficiencies in the Agreement.  However, the Protocol maintains the initial intention of the Agreement, to create a system of simple and inexpensive international trademark registration.  Therefore, while only 56 countries are presently part of the agreement, a total of 91 countries including the U.S. are party to either  the Agreement and the Protocol or to the Protocol by itself.   

 

4.     Overlapping Membership

Any party State to the Paris Convention for the Protection of Industrial Property may become a party to the Agreement or the Protocol or both.  In addition, an intergovernmental organization may become a party to the Protocol (but not the Agreement) where these conditions are met: at least one of the Member States of the organization is a party to the Paris Convention and the organization maintains a regional office for the purposes of registering marks with effect in the territory of the organization. (See the Madrid System)  The number of countries to which international registration may be extended corresponds to the national origin of the basic application or registration and may include the signatories of the Agreement, the Protocol, or both.  Since the U.S. is not a signatory to the Agreement, an international registration based on application for U.S. trademark registration would be limited to protection in those countries which are members of the Protocol.  However, multinational companies who register their marks under either the Agreement or the Protocol need to be aware of the open a closed sets of member parties created by overlapping membership. To ease the possible confusion created by overlapping membership, WIPO provides form MM2 (E) for international application for the Protocol and form MM3 (E) for those applications covered by both the Agreement and the Protocol. 

 

4.1.  Procedure for an International Application

Applications for international registration may be filed only by natural persons or legal entities within a country, which is party to the Agreement or the Protocol.  The Madrid system of international registration cannot be used to protect a trademark outside the Madrid Union.  An international registration can only be filed for a mark that has already been registered (or, where the international application is governed exclusively by the Protocol, if registration has been applied for) in the Office of origin.  An international application must designate one or more Contracting Parties in which the mark is to be protected.  Applications may be amended to include further Contracting Parties after the original application for registration has been submitted. 

 

There are three kinds of international application:

1.     An international application governed exclusively by the Agreement; this means that all the designations are made under the Agreement;

2.     An international application governed exclusively by the Protocol; this means that all the designations are made under the Protocol;

3.     An international application governed by both the Agreement and the Protocol; this means that some of the designations are made under the Agreement and some under the Protocol.

 

An international application must be presented to the WIPO International Bureau through the Office of origin and must contain at least:

·       A reproduction of the mark (which must be identical with that in the basic registration or basic application);

·       A list of the goods and services for which protection is sought, classified in accordance with the International Classification of Goods and Services (Nice Classification).

 

The United States Patent and Trademark Office (USPTO) is the Office of origin for applications originating in the US.  It has electronic forms for the filing of an application for international registration, subsequent designation, and response to a notice of irregularity.  These forms can be accessed here.

 

Applications that are governed exclusively by the Agreement must be in French; those that are governed exclusively by the Protocol or by both the Agreement and the Protocol, may be in either English or French, though the Office of origin may restrict the applicant’s choice to one of these languages.

 

See Madrid Agreement - Marks in Chapter 5 of the WIPO Intellectual Property Handbook.

                                                                                                                                                                

4.2.  Fees

International applications are subject to the following fees:

1.     The basic fee;

2.     A complementary fee for each designated Contracting Party for which no individual fee is payable;

3.     An individual fee for any Contracting Party, which is designated under the Protocol and has declared that it wishes to receive such a fee.  The amounts of the individual fees are determined by the respective Contracting Parties and are published in the WIPO Gazette of International Marks; each of these Contracting Parties has the possibility, under the Common Regulations, to specify that such a fee is to be paid in two parts (the first part to be paid at the time of filing and the second part when, and if, the Office concerned is satisfied that the mark qualifies for protection);

4.     A supplementary fee for each class of goods and services beyond the third class; no supplementary fee is payable, however, where all the designations are ones in which an individual fee has to be paid.

In the US, an international applicant must pay fees to the USPTO and to the International Bureau.  The USPTO charges a fee for certifying international applications and transmitting them to the International Bureau, called a "certification fee."  The certification fee is $100.00, per class, if the international application is based on a single U.S. application or registration.  The certification fee is $150.00, per class, if the international application is based on more than one U.S. application or registration.

The International Bureau requires payment of fees based on whether the reproduction of the mark is in black and white and/or in color, the particular Contracting Parties designated in the international application, and the number of classes of goods and services indicated in the international application.  The international application fees must be paid directly to the International Bureau in Swiss francs.

See the Schedule of Fees .

 

5.     Date of Registration

The Office of origin must certify that all aspects of the mark are the same as that in the basic registration or basic application.  The Office of origin must also certify the date on which it received the request to present the international application; if the application is received by the International Bureau within two months of that date and there are no crucial elements missing from the application, then the date of receipt by the Office of origin will be the date of international registration.  If the application meets all the applicable requirements, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks. The International Bureau then notifies each Contracting Party in which protection has been requested.  International registration is effective for 10 years and may be renewed for subsequent 10-year periods upon payment of the required fees.

 

See Madrid Agreement - Marks in Chapter 5 of the WIPO Intellectual Property Handbook.

 

6.    Searching for an International Mark

The Madrid Express database is a free system, updated daily, provided by WIPO to search for International Marks.  The database has both simple search and advanced search interfaces.  Madrid Express includes all international registrations that are currently in force or have expired within the past six months.  It also includes data relating to international applications and subsequent designations that have been received by the International Bureau but have not yet been recorded in the international register of marks.  The user should be aware that in the case of marks not yet recorded, the International Bureau has not yet made a decision on their international applications or subsequent designations.  WIPO makes every effort to ensure that the information in the database accurately reflects the data recorded in the International Register, however, the user must also be aware that the only official publication remains the Gazette and the only official statements by the International Bureau regarding the contents of the International Register for a given international registration remain the certified extracts from the Register established on request by the International Bureau.

 

7.     Print Sources

·       Guide to the International Registration of Marks Under the Madrid Agreement and the Madrid Protocol.  World Intellectual Property Organization, Geneva, (2009).

 

·       U.S. Implementation of the Madrid Protocol. North Carolina Bar Association Foundation, Cary, N.C. (2005).

 

·       The Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement: Objectives, Main Features, Advantages.  World Intellectual Property Organization, Geneva (2004).

 

·       John T Masterson, International Trademarks and Copyrights: Enforcement and Management.  Section of International Law and Practice, American Bar Association, Chicago (2004).

 

·       Jerome Gilson & Anne Gilson Lalonde, The Madrid Protocol: Trademark Superhero?  Matthew Bender, Newark, N.J. (2004).

 

8.    Journal Articles

 

·       Federico González Peña, The Madrid System from a Mexican and Broader Latin American Perspective, 25-AUT Int’l L. Practicum 179 (Autumn, 2012).

 

·       L. Donald Prutzman, Overview of the Madrid System and the United States Perspective, 25-AUT Int’l L. Practicum 173 (Autumn, 2012).

 

·       John N. Arnone, International Mark Search Basics for the U.S. Markholder, 19 J. Contemp. Legal Issues 473 (2010).

 

·       Rachelle H. Thompson, International Trademark Protection Strategy, 19 J. Contemp. Legal Issues 479 (2010).

9.   Conclusion

With the accession of the United States to the Madrid Protocol in 2003, the reality of an international system of trademark registration came one-step closer to fruition.  The Madrid System of international trademark registration is now more inclusive and offers businesses and individuals in both the United States and other member countries a simple, affordable, and efficient way of obtaining and maintaining their trademarks.  This article was intended to provide background knowledge on the Madrid System of International Trademark Registration and to aid researchers in finding materials, resources, and forms necessary for registration under the System.  The article was not intended to be a comprehensive guide to the Madrid System. Researchers requiring further information should consult the academic texts and official publications described in this article for more detailed information.