Madrid Protocol offers advantages to trademark owners

The world, at least for trademark owners, is shrinking. On Nov. 2, the United States became a party to Madrid Protocol. Madrid Protocol is a treaty that enables a trademark owner to convert a single U.S. trademark registration into an international registration, which may be good in up to 60 countries.

Historically, a U.S. business seeking trademark protection in foreign countries faced a daunting and expensive task. A separate application for trademark protection had to be filed in each country. It was generally necessary to hire a local representative to shepherd the trademark application through the appropriate tribunal.

The expense of the local representative and the cost to translate the application to the local language often exceeded the foreign trademark application fees. Also problematic were disjointed renewal periods between foreign countries and U.S. trademark registrations that required trademark owners to diligently monitor trademark renewal periods in each country of registration.

With the entry of the United States into Madrid Protocol, these historical problems are, for the most part, history. The most important advantages Madrid Protocol offers are the ability to register a mark in several countries simultaneously based on a single application filed in a single language in a single office (the office of origin).

Similarly, international registrations are renewable at 10-year intervals through a single transaction.

Under the protocol, a mark's owner who has applied for or obtained a registration in the U.S. Patent and Trademark Office can convert the U.S. filing or registration into an application for international registration.

The Patent and Trademark Office files the international application on behalf of the U.S. owner with the World Intellectual Property Organization in Geneva, Switzerland.

When the international application is forwarded to WIPO, the U.S. owner designates the other countries where it wants protection.

Each designated country must be a party to the protocol. It is still necessary to pay application fees in each designated country.

Once WIPO has approved the application for international registration, WIPO forwards the registration to the member countries the owner of the mark has designated. At the outset, the mark is protected in the designated countries from the date WIPO approves the international registration.

However, each of the national trademark agencies in the designated countries has up to 18 months to examine the mark under local law and to permit citizens of that country to oppose registration. If the trademark agency in a designated country rejects an international registration after examination or the registration is successfully opposed in the country, the international registration becomes void in that country. However, this does not prevent the registration from taking effect in any other country the trademark owner has designated.

After five years, the international registration becomes independent from the mark filed in the office of origin. If the registration in the office of origin ends for any reason within the first five years, the international registration also ends.

Trademark owners have the option to extend their international registrations to other countries that are parties to the protocol at a later date, as well as to other countries that join the protocol after the initial international registration.

Both for the initial countries designated and those designated later, there is no need for a trademark owner to hire local counsel unless the mark is refused local registration by a country's trademark agency or registration is opposed in that country.

An additional benefit is that ownership or other information particular to a mark registered in multiple countries can be changed with a single document filed with WIPO.