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Background: The Madrid Protocol was adopted on June 27,
1989 to become in force commencing December 1, 1995 and has been operational
since April 1, 1996. On November 2, 2002 President Bush signed into law
the Madrid Protocol Implementation Act. The United States Patent and Trademark
Office (USPTO) has one year to prepare for the implementation of the Protocol
in the United States. The USPTO will establish rules and ready its staff
for an anticipated influx of filings under the Madrid Protocol. It is noteworthy
that the Madrid Protocol is an extension of the Madrid Agreement for the
International Registration of Marks first concluded on April 14, 1891. |
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Countries: There are currently sixty one countries
which are members of the Madrid Protocol. They are: Albania, Antigua (and
Barbuda), Armenia, Australia, Austria, Belarus, Belgium (Benelux), Bhutan,
Bulgaria, China, Cuba, Cyprus (Effective 11/4/2003), Czech Republic,
Denmark, Estonia, Finland, France,
Georgia,
Germany, Greece, Hungary, Iceland, Iran (Effective 12/25/2003), Ireland,
Italy, Japan, Kenya, North Korea (Democratic People’s Republic of
Korea), South Korea (Republic of Korea), Latvia, Lesotho, Liechtenstein,
Lithuania,
Luxembourg (Benelux),
Macedonia (Republic of, former Yugsolav), Moldova (Republic of), Monaco,
Mongolia, Morocco, Mozambique, Netherlands (Benelux), Norway, Poland, Portugal,
Romania, Russian
Federation,
Sierra
Leone, Singapore,
Slovakia, Slovenia, Spain, Swaziland, Sweden, Switzerland, Turkey, Turkmenistan,
Ukraine, United Kingdom, Yugoslavia (Serbia and Montenegro) and Zambia.
Canada is expected to join shortly as are New Zealand, Israel and OAPI.
As of November 18, 2003, The European Community (CTM) has started to make
provisions for joining the Madrid Protocol and is expected to join in the
fall 2004. |
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Protocol Protection: The Madrid Protocol provides a means
for simultaneously seeking protection for a trademark in multiple jurisdictions.
A Madrid Protocol application is known as an International Registration.
However, the use of this term is misleading since under the Madrid Protocol
a trademark owners simply seeks a series of simultaneous national applications
through a unified application. An International Registration application
under the Madrid Protocol can be filed by any national or legal entity having
a "real and effective industrial or commercial establishment"
in a jurisdiction belonging to a Madrid Protocol country. The International
Registration can only be made into those other countries which are also
members of the Protocol. Similarly, members to the Madrid Agreement (the
1892 treaty noted above) can only apply for coverage in other Madrid Agreement
countries. Members of both the Madrid Agreement and Madrid Protocol are
free to apply for registration of their marks within the membership of both. |
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Application: A trademark owner of a Madrid Protocol member
country may apply for a trademark on the basis of either an existing registration
in their home country or to file new application in the home country and
seek an extension for international protection. Note that the extension
of coverage must be for the same mark; for the same goods and services;
for the same classes; with the same owner as the home or base application.
At the time of filing, the applicant designates which other Madrid Protocol
countries are to be covered. The national Trademark Office of each country
have between 12 and 18 months to substantively examine the application for
registrability. Each countries' individual substantively laws apply, including
the possibility of oppositions. The International Registration protection
lasts ten years. |
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Limited Dependency: The International Registration is
dependent on the home application on which it was based for a period of
five years. During this initial period, if the home application is cancelled,
abandoned or withdrawn, the International Registration will be cancelled,
abandoned or withdrawn as well. There is a significant difference here between
the Madrid Agreement and the Madrid Protocol where under the Madrid Agreement,
it was possible to institute a "central attack" by successfully
attacking or opposing a base application would destroy all of the International
Registrations based upon it. Under the Protocol, there is a modified procedure
known as "transformation" where an applicant can choose to have
any dependent International Registrations based on original filing and have
them "transformed" into separate, national applications in each
of the designated countries. Thereafter, the applications are treated as
nationally filed applications. Furthermore, after the initial five years,
the International Registrations become independent of the home country base
application or registration. |
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Advantages: There are a number of advantages to using
the Madrid Protocol, but the most important is the simplified filing procedure
and the reduced cost. Furthermore, the maintenance and renewal of the International
Registration is simplified as well. |
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Conclusion: The Madrid Protocol is a supplemental filing
system that is intended to centralize and simplify the worldwide trademark
application process. It is only of benefit to those companies that are seeking
protection of their marks in numerous countries or who will otherwise have
an international presence. We have already had experience in these matters
for clients based outside of the United States. We look forward to the United
States implementation of the Madrid Protocol and will keep our clients advised
of the availability of these filings. |
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