 
by Jodi Sax |
10.11.04
There is a new system in place that streamlines the process for U.S. trademark holders and applicants to obtain international registration of their marks. (Previously, one had to deal separately with a representative in each country to obtain trademark registration; an often cost-prohibitive and complicated proposition.) While the new procedure is not entirely without complication, nor is it entirely inexpensive, it does make it much more feasible for a committed trademark owner to obtain international trademark registration. Below I have outlined the basic procedure for obtaining international trademark protection under the Madrid Protocol. It is a complex procedure, but this should give you a basic overview of what is entailed and what one can obtain. As always, if you have questions, please consult a qualified professional.Introduction. The Madrid Protocol is an international treaty that allows a trademark owner to seek international registration of their trademarks in any of the signatory countries to the Protocol, which include the EU and most of the rest of Europe, Asia and many other countries. This process can now be completed by filing a single "international application." The Madrid Protocol went into effect in the United States on November 2, 2003. As of that date, U.S. trademark owners can submit an international application for trademark registration via the United States Patent and Trademark Office ("USPTO"). This system gives a trademark owner the possibility to have his mark protected in several countries by filing one application with a single office, in one language, with one set of fees in one currency. Please note that the Madrid system is administered by the International Bureau of the World Intellectual Property Organization in Switzerland (the "International Bureau"). However, to apply for an international mark based on a U.S. mark, one goes through the USPTO. Who can apply? Any trademark owner with an application filed in or a registration issued by the USPTO and who is a national of, has a domicile in, or has a commercial establishment in the United States can submit an international application through the USPTO. What are the effects of an international registration? An international registration produces the same effects as an application for registration of the mark made in each of the respective countries designated by the applicant. The Madrid system also simplifies the subsequent management of the mark in foreign countries, since it is possible to record subsequent changes (such as a change in ownership or a change in the name or address of the holder) or to renew the registration through a single procedural step with the International Bureau. How to file for an international registration. To file an international application through the USPTO, an applicant must have a U.S. trademark application, called a "basic application" or a U.S. trademark registration, called a "basic registration." There are then certain administrative steps (i.e., certification of the U.S. mark via paperwork filed with the USPTO and payment of fees) that must be followed to complete the international application process. Once completed, the USPTO will forward your application to the International Bureau for processing, as described below. What happens after the international application has been submitted to the USPTO? If an international application meets the applicable statutory requirements, then the USPTO will issue a certification and forward the application to the International Bureau for processing. If requirements are not met, the applicant will be notified accordingly and the applicant can resubmit the application (fees are not refundable and so must be resubmitted. Get it right the first time.) Thereafter, once a mark is certified by the USPTO, the International Bureau will review the international application to determine whether it meets the Madrid Protocol filing requirements. If the requirements are met and the fees paid, the International Bureau will then register the mark and issue appropriate notifications, which gives the chance for objections to registration in the foreign county(ies) to be filed. If no objection is issued (i.e., protection not refused) within a certain period of time (12 or 18 months), the registrant shall be granted protection of its mark in the foreign country(ies) in which registrant has applied. The protection of the mark is the same as if it had been registered by the trademark office in that county. What does it cost? 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. There are then additional fees applicable based on some specifics of the mark. In addition, each country will have filing fees payable for registration. All fees are payable in Swiss Francs. The international registration process under the Madrid Protocol is not cheap, but is certainly much less expensive than filing internationally under the former (non)system. How long does the international registration last? An international registration is effective for a period of ten years. It may be renewed for further periods of ten years on payment of the prescribed fees. After the mark in an international application registers, can the holder of the international registration request an extension of protection in additional countries? Yes. * * * As you can gather, registration under the Madrid Protocol system is complicated and this is a mere summary to give a basic understanding of the procedure. This summary is for informational purposes only, and does not constitute legal advice. If you would like to commence an international trademark application procedure, it is recommended that you consult with a qualified trademark practitioner.You can find more information about the Madrid Protocol on the USPTO and WIPO websites. If you would like to discuss international registration of your mark, please feel free to contact me: jodisax [at] earthlink [dot] net. |