Where can you file one trademark application in multiple countries, in English, in one office, with one fee, resulting in one registration to administer? Not in the United States. Not yet anyway. But it will soon be possible, and businesses should get ready to take the opportunity to obtain foreign protection for their valuable trademarks.

Now is the time for businesses to consider the benefits of filing for international trademark protection. While the Madrid Protocol sounds like a mysterious international spy thriller, it is simply an international trademark filing and registration system that is coming to America, making it easier for U.S. businesses to enter foreign markets.

The Protocol

The Madrid Protocol is an international trademark treaty that allows for protection of trademarks in Protocol member countries. It is based on the Madrid Agreement, a parallel trademark treaty first adopted in 1891.

Because of certain restrictive provisions in the Madrid Agreement, a number of industrialized countries, including the United States, Great Britain, and Japan, have refused to join. To encourage these countries to participate, the agreement was modified and a new agreement, the Protocol, came into effect in 1996.

Early in 2001, the House of Representatives passed the Protocol implementation bill, and the Senate Judiciary and Foreign Relations Committees have since approved it. It now moves to the full Senate for approval, after which the United States will have one year to ratify it.

As of January, there are 55 countries – including Great Britain and Japan – that are members of the Protocol.

Administration

Once the United States is a member of the Protocol, U.S. businesses will be able to file and register a trademark with the World Intellectual Property Organization’s International Bureau, selecting the member countries where they desire protection. The business (or individual) must be a U.S. national or domiciled in the United States or have a business establishment in the United States.

The international application has to be based on a current trademark application or registration at the U.S. Patent and Trademark Office, and will be limited to the goods or services listed in the Basic Application or Registration. The international application will be filed with the PTO, in English, with the fee based on the number of countries selected for protection by the applicant and the number of classes of goods or services listed in the application. The PTO will certify the applicant’s pending Basic Application or Registration, and transmit the international application to the Bureau.

The Bureau will examine the application. It will check to make sure the filing requirements and administrative formalities have been complied with – i.e., that the goods and services are listed satisfactorily, are in the right class(es) and the required fees paid. The Bureau will then place it on the International Register and publish the mark in the “WIPO Gazette of International Marks.” The Bureau then forwards the details of the mark to the countries designated by the applicant.

Next, the mark will go through the national procedures in effect in the designated countries. Each country’s trademark office will communicate status information directly to the Bureau, which will place the information in the international registration file, and transmit it to the PTO and the applicant.

In due course the national office will either register the mark or issue a rejection. The Protocol requires that they do so within 12 months to 18 months. If a refusal is not issued within the time limit, then protection is automatically granted.

Even if there is an initial rejection, it will be possible for the applicant to respond directly through local counsel to the national office and make arguments in support of registration. Protection in each of the designated countries is identical to the protection obtained by a direct filing with that country’s trademark office.

An international registration lasts for 10 years, and is renewable indefinitely as long as the required fees are paid. Renewals, assignments, transfers, and other administrative changes are all handled by the Bureau by the filing of simple forms along with the requisite fees. It is also possible to seek protection in additional countries any time after registration.

Advantages and disadvantages

The high cost of filing multiple national applications has kept many businesses from seeking foreign trademark registration. The Protocol may provide a less expensive alternative for filing for international protection by reducing the cost and complexity of foreign protection.

The main advantage of the Protocol is that a U.S. business will be able to file a single application, in English, with the PTO that will protect its trademark in all of the Protocol member countries it designates in its application. Contrast this with the current system, which requires engaging local counsel in each country where protection is desired, and paying fees to the attorneys, the national trademark authority, and for translation. Additionally, registration under the Protocol will result in a single registration, which will stream-line post-registration administration of the trademark, further reducing costs.

The major disadvantage of the Protocol is the reliance on the Basic Application or Registration to support the international registration. For a period of five years, the international registration is vulnerable to cancellation. If for some reason the Basic Application is abandoned or the Basic Registration canceled, the international registration is also canceled.

However, there is a safe harbor. The international registration can be “transformed” into separate national applications in the designated countries, which will retain the filing date of the original international application. Cancellation of an international registration is a statistically rare occurrence – around seven cancellations per 1,000 registrations.

Conclusion

Businesses should consider the benefits of filing for international trademark protection under the Protocol, and the time to start planning is now. When the United States joins the Protocol, not only will domestic businesses rush to file for foreign protection, but foreign trademark owners who want protection in the No. 1 economy in the world will clog the already burdened USPTO trademark system. The Madrid Protocol is coming to America, and it is no mystery that strategic planning and preparation is critical to assure that U.S. trademark owners acquire valuable international protection.

Hoisington is an associate in the intellectual property group of Higgs, Fletcher & Mack LLP.