INTERNATIONAL TRADEMARK PROTECTION AND THE MADRID PROTOCOL

International registration of trademarks is now available through the USPTO under the term of the “Madrid Protocol”, effective for the US as of November 2, 2003. Other countries that are subject of the Protocol are Australia, China, Denmark, Egypt, Finland, France, Germany, Greece, Iran, Italy, Ireland, Japan, Norway, Portugal, the Russian Federation, Spain, Sweden, UK and the Ukraine. The European Community (EU) is also listed as a member.

As a very brief summary, the Madrid Protocol operates in the following manner:

The application is dependant upon an existing US application or trademark registration.
The international application is filed through the USPTO. The application designates member countries in that the applicant seeks trademark protection.
The list of goods and services subject of the international application cannot be broader than the counterpart US application or registration.
The USPTO must certify, for a fee, the accuracy of the international application. (The fee is currently $100 per class.)
The application is then forwarded by the USPTO to the International Bureau, part of WIPO, located in Geneva Switzerland.
There are additional filing fees payable to the International Bureau (IB). The amount of the fee is dependant upon the list of designated countries and the number of trademark classifications. If the international application is electronically filed through the USPTO, the fees can be paid in US dollars. Otherwise they must be paid directly to the IB in Swiss Francs.
The international application, certified by the USPTO, must be examined by the International Bureau.
If the application passes scrutiny and the required fees have been paid, the mark will be registered by the IB. The IB will notify the member countries designated by the applicant and request extension of trademark protection under the individual country laws. Although each designated country can examine and refuse registration under the terms of its individual laws, refusal must be made no later than 12 months from receipt. The examination may be extended up to 18 months if there is a refusal. If there is no refusal within the 12 month time period, registration and protection is deemed granted.
Priority to the date of the initial US application can be claimed if the international application is filed in the USPTO within six months from the initial US application.
If the US application upon which the international application is based is abandoned, or cancelled with the first 5 years (remember the section 8 affidavit filing requirement for US trademarks) or registration is refused, then the international registration will be cancelled. Also remember that the US mark does not acquire a presumption of incontestability until after 5 years of registration. The mark can be subject of an opposition or cancellation proceeding. See trademark opposition.

Other points to be noted included that if registration is sought in the European Community, a second language, i.e., French, German, Italian or Spanish, must be designated.

The US dollar equivalent of basic international filing fees, paid in addition to the fees to the USPTO, are approximately $600.00 to $800.00. In addition, there are additional fees per each trademark class.

The international registration, like US registration, must be renewed every 10 years. Renewal filing and payment of required fees can be made electronically through the USPTO.