International Registration of Trademarks

by Alicia Brown Oliver
       

Big changes are afoot in the world of trademarks.  On November 2, 2003, the United States will officially implement the Protocol Relating to the Madrid Agreement Concerning International Registration of Marks (the "Madrid Protocol").  What will it mean for you?  First and foremost, if you are a trademark owner who wants to protect your mark overseas, the process for filing an application for international registration and obtaining protection in foreign countries is going to become a lot easier. The Madrid Protocol will still be important to you, even if you only use your mark domestically, because it allows owners of marks registered in another country that is a party to the Madrid Protocol to seek trademark protection in the United States based on their foreign registrations.  Therefore, obtaining federal registration for your mark (if possible) and policing your mark will become even more important.

Background of the Madrid Protocol.  What is it?

The Madrid Protocol is an international system for obtaining registration of trademarks in the fifty-seven member countries.  It has been around for many years but has only recently been adopted by the United States.  To apply for protection in one of the member countries, the trademark owner must be domiciled in, have a "real or effective" business in, or be a national of one of the member countries.  The trademark for which protection is sought must either be registered or the subject of a pending application in one of the member countries.  The Protocol is administered by the Office to the International Bureau of the World Intellectual Property Organization (the "IB"). Prior to adoption of the Madrid Protocol, U.S. trademark owners had to apply to register their marks in each individual country and generally had to hire international counsel to process their applications.  The result was an arduous and often costly process.  The Madrid Protocol seeks to simplify the process.

I Want to Register My Trademark Internationally.  How Does it Work?

A U.S. trademark owner must apply for an international registration through the United States Patent and Trademark Office ("USPTO"), and his international application must be based on a U.S. registration or a pending U.S. application for registration.  For example, XYZ Company, which owns a U.S. Registration for the mark ABC for use in connection with widgets, decides to begin selling widgets in connection with its mark in the United Kingdom.  XYZ will file an international application with the USPTO seeking to extend its trademark rights to the U.K.  The USPTO will transmit the application to the IB where it will be examined to determine if it meets all of the formal requirements.  If so, the IB will issue an international registration, publish the mark in World Intellectual Property Gazette and notify the U.K.'s trademark office that XYZ is seeking to extend its trademark protection for its ABC mark.  The U.K.'s office will then examine the application to determine if an extension of protection is warranted.

How Much Does it Cost?

There are two separate fees associated with filing an international application.  The USPTO will charge a processing fee of $100.00 per class for an international application based on one registration or application and $150.00 per class for an international application based on multiple registrations or applications.  The IB and the country(ies) in which protection is sought will also charge a fee that is measured in Swiss francs.  The fee varies depending upon which country the international application designates and the exchange rate.  For example, an application seeking protection in China for one class of goods or services is 345 Swiss francs (app. $260.00 U.S.D.), but an application seeking protection in Italy for one class or goods or services is 112 Swiss francs (app. $84.00 U.S.D.).  These fees can be paid directly to the IB in Swiss francs or through the USPTO in U.S. dollars.

What if I Don't Have Any Interest in International Trademark Protection?

The Madrid Protocol is still important to you.  Because the process described above is available to all member countries, many foreign trademark owners will be seeking to extend the protection afforded by their foreign registrations into the United States.  The USPTO will search its records for registered and pending marks that are likely to be confused with the marks which are the subject of an international application before allowing registration, and it will offer U.S. trademark owners the opportunity to oppose the extension of trademark rights based on an international application if confusion is likely to result from such extension.  Therefore, it will be even more important to federally register marks (if possible) and it will also be important to oppose registration of marks which you believe are likely to be used in a way that will confuse your customers and potential customers who are familiar with one of your marks.
 
If you are interested in international registration of a trademark or would like more information on the Madrid Protocol, please contact a member of our Intellectual Property Group.

This is an advertisement. Certification as a Specialist in Intellectual Property Law by the Tennessee Commission on Continuing Legal Education and Specialization is not currently available.  None of the attorneys listed in this communication are certified in any area of Specialization.

© 2003 Chambliss, Bahner & Stophel, P.C.