International Trademark Registration

International Trademark Registration System – Madrid Protocol

The Madrid Protocol, also known as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, is an international system for trademark registration that provides a streamlined process for trademark holders to gain protection in multiple jurisdictions around the world.

Here’s a breif overview:

• International Scope: The Madrid Protocol facilitates trademark registration in multiple member countries (more than 100, as of my last training cut-off in 2021) through a single application, in one language, with one set of fees, in one currency (Swiss Francs). It therefore simplifies the process of multi-country trademark registration and lowers costs for applicants.
• Centralized Administration: Once the international registration is granted, any subsequent changes such as renewal, assignment, licensing, or changes in name or address can be recorded with WIPO (World Intellectual Property Organization) with effect in all designated member countries.
• Bundle of National Rights: Despite its international nature, an international registration under the Madrid Protocol is essentially a bundle of national rights. Each designated member country retains the right to apply its own trademark laws and procedures in deciding whether to grant or refuse protection.
• “Home” Registration or Application: To use the Madrid Protocol, an applicant must have a national (or regional) trademark registration or application (“home” registration or application) in a member country or region. This is the basis for the international application.
• Duration and Renewal: An international registration lasts for ten years and can be renewed directly with WIPO for additional ten-year periods. A trademark owner may renew its international trademark registration under eMadrid at the earliest of six months before the ten-year term of protection expires, or within the six-month grace period following its expiry.
• Language: The application can be filed in English, French, or Spanish, regardless of the national language of the originating office.

This system offers considerable advantages for trademark owners who do business in multiple countries or plan to expand abroad. However, it also has some complexities and potential pitfalls, so it’s advisable to consult with our trademark attorneys to assist in navigating international trademark registration.

Madrid Protocol International Trademark Application Procedures

The United States Patent and Trademark Office (USPTO) allows US trademark owners to file international applications under the Madrid Protocol. Here is a brief summary of the steps involved in the process:

• Basic Application or Registration: Before applying for international registration, you must have a US trademark application, known as the “basic application,” or a US trademark registration, known as the “basic registration.” The international application must be based on this basic trademark application or trademark registration.
• Filing the International Application: You file the international application through the USPTO, not directly with WIPO. The international application must identify the same trademark and the same owner as the basic trademark application or registration. It can only include goods and services that are also included in the basic application or registration.
• Certification by USPTO: The USPTO reviews the international application for certification. If the international application is properly linked to a valid basic application or registration and all fees have been paid, the USPTO will certify the international application and send it to WIPO.
• Review by WIPO: WIPO conducts its own review of the international application. If the application meets WIPO’s requirements, WIPO will register the mark, publish it in the WIPO Gazette, and send a certificate to the trademark owner.
• Request for Extension of Protection: WIPO will then send a request for extension of protection to each of the countries or regions the trademark owner has designated. Each designated country or region will review the request for extension of protection according to its own laws and rules.
• Grant or Refusal by Designated Countries/Regions: If a designated country or region grants protection, it will notify WIPO, and the trademark will be protected in that country or region as if it were registered directly there. If a designated country or region refuses protection, it must notify WIPO within a specified period (usually 12 or 18 months).
• Maintenance of International Registration: The international registration can be maintained and renewed through WIPO. However, it remains dependent on the basic application or registration in the US for a period of five years. If the basic application or registration is cancelled or limited during this five-year period, the international registration will be cancelled or limited to the same extent. A trademark owner may renew its international trademark registration under eMadrid at the earliest of six months before the ten-year term of protection expires, or within the six-month grace period following its expiry.

The USPTO and the Madrid Protocol System

The United States Patent and Trademark Office (USPTO) interacts with the Madrid Protocol system in three primary ways:

• As a “Office of Origin”: A U.S. trademark owner who wishes to register their trademark internationally via the Madrid Protocol must first apply for or have a registration in the U.S. This “basic” application or registration serves as the basis for the international application, which is then submitted through the USPTO. The USPTO reviews the international application for formal correctness and compliance with the requirements of the Madrid Protocol, certifies it, and forwards it to the World Intellectual Property Organization (WIPO) for further processing.
• As a “Designated Contracting Party”: When a trademark owner from a member country of the Madrid Protocol designates the United States for protection of their mark, WIPO sends the request for extension of protection to the USPTO. The USPTO then examines the request in accordance with U.S. trademark law, just as it would a direct national application. If the mark meets all the requirements, the USPTO will grant protection. If not, it will issue a provisional refusal to WIPO, who will then inform the holder. The holder may respond or appeal the refusal directly with the USPTO, similar to a direct national application.
• As a “Administrator” of International Registrations: For U.S.-based international registrations, the USPTO’s Madrid Processing Unit (MPU) handles correspondence with WIPO regarding changes in the international registration, such as renewals, changes of ownership, limitations, cancellations, and changes of name or address. This administrative role is critical in ensuring the up-to-date and accurate management of international registrations.

These roles illustrate how the USPTO plays a crucial part in both outbound (from the U.S. to other countries) and inbound (from other countries to the U.S.) trademark registrations under the Madrid Protocol, as well as the ongoing management of international registrations.

Foreign Based Applicants for US Trademark Registration

A trademark applicant residing outside of the United States has the ability to apply for a United States trademark registration in a manner similar to a U.S. citizen or business. This involves submitting an application through the United States Patent and Trademark Office (USPTO) and following U.S. trademark laws and regulations.

One crucial element is that, as of August 3, 2019, all foreign-domiciled applicants are required to be represented by an attorney who is licensed to practice law in the United States. This is to facilitate effective communication and ensure compliance with US Trademark Laws.

Section 44 Trademark Applications

The United States has assumed certain obligations from agreements adopted at the Paris Convention for the Protection of Industrial Property of 1883 and subsequent revisions to these agreements. The United States is also a member of the Inter-American Convention for Trademarks and Commercial Protection (also known as the “Pan-American Convention”), the Buenos Aires Convention for the Protection of Trade Marks and Commercial Names, the World Trade Organization, and certain other treaties and agreements.  Section 44 of the Trademark Act, implements these agreements.

Section 44 of the United States Trademark Act allows foreign applicants to register their trademarks in the U.S. based on either a foreign application or a foreign registration. This provides a couple of unique advantages to non-U.S. applicants.

First, under Section 44(d), an applicant can file a trademark application in the U.S. based on a foreign application filed in their country of origin within the past six months. This allows the applicant to claim a priority date based on the foreign filing. The U.S. application must involve the same trademark and the same goods and/or services as the foreign application.

Second, under Section 44(e), an applicant can file a U.S. application based on a trademark registration in their country of origin. The benefit here is that the applicant doesn’t need to prove use of the trademark in U.S. commerce at the time of registration, which is usually required for U.S. trademark applicants.

However, eventually, to maintain the U.S. registration obtained via Section 44(e), the owner will have to start using the mark in U.S. commerce and provide a specimen of such use to the USPTO.

In both cases, the applicant must be a national of, domiciled in, or have a real and effective industrial or commercial establishment in the country of the foreign application or registration. Also, the application must be filed by a U.S.-licensed attorney.

It’s also worth noting that Section 44 can be combined with the Madrid Protocol. An applicant can file an international application under the Madrid Protocol based on a Section 44 application or registration. This gives the applicant a way to register their trademark in multiple countries, including the U.S., using a single application.

Section 66 Trademark Application – Extension of Protection to the United States

Section 66(a) is a Madrid Protocol trademark application. If a person or business located in a Madrid Protocol member country has a trademark registration or has applied for registration in their home country, they can file for international registration with their home country’s trademark office. As part of this international application, they can request an extension of protection to other Madrid Protocol member countries, including the United States.

When the home country’s trademark office receives the international application, it checks the application for compliance with the Madrid Protocol and certifies it. The application is then forwarded to the World Intellectual Property Organization (WIPO), which performs a formal examination of the application. If approved, WIPO will register the trademark and publish it in the WIPO Gazette of International Trademarks.

Following this, WIPO sends a request for extension of protection to the United States and any other countries designated in the application. In the US, this request is examined by the United States Patent and Trademark Office (USPTO) in much the same way as a national trademark application. If the USPTO does not find any grounds for refusal, the mark is granted protection as though it were registered directly in the US.

It’s important to note that while the Madrid Protocol simplifies the application process for international registration, the actual protection of the mark is still subject to the laws of each individual country. Therefore, a trademark may be granted protection in one country and refused in another.