The Madrid Protocol Concerning the International Registrations of Marks

By Diana Muller

The Madrid Protocol is an international treaty with more than 122 member countries that permits trademark owners residing in any of the member/contracting countries to file an international application in their home country and be able to register the mark in other member/contracting countries. It is efficient because one application is sufficient, the cost for the filing is substantially more reasonable than if the trademark owner were to file national applications in various countries and no local agent is required to do the filing. A trademark owner may designate as many of the member countries that need to be protected by paying the corresponding fees. The application is first filed with the trademark office of its country of origin for review and certification and thereafter is sent to the WIPO (World Intellectual Property Organization) where it becomes a so-called International Registration and forwarded to the designated countries for review. WIPO coordinates the administrative tasks related to the international protection as well as assignments, renewals, etc. Clients that intend to expand their businesses to other countries, have manufacturing facilities in other countries and are concerned about piracy and infringements could highly benefit from this system as long as they understand the advantages and disadvantages of adopting this alternative.

Opting for this system does not mean that the International Registration will be automatically available in each of the designated member countries. Each individual participating and the designated country has to decide whether protection for the mark should be granted according to the laws and practices of that country.

An entity or individual that resides or has a commercial establishment or is a citizen of one of the member countries can apply. The application needs to be filed with the applicant’s home country’s trademark office. In the U.S. it is the United States Patent and Trademark Office (USPTO). The application must be filed based on a registration or a pending application in the applicant’s home country. In the United States, it is highly recommended that the International application be based on a registration on the Principal Register and, preferably, an incontestable registration. Note that applications based on U.S. registrations on the Supplemental Register could encounter descriptiveness issues when examined by each of the designated countries.

The timing for filing a Madrid Protocol application on the basis of a pending application in the United States is complicated. The U.S. permits applications on the basis of use of the mark in commerce or intent-to-use. Many times applicants file their applications based on use and intent-to-use. At the time a Notice of Allowance is received, an applicant will need to file a Statement of Use indicating that the trademark has been placed into use in commerce in regard to the list of goods covered by the application. In many instances, the applicant is not ready to submit proof of use for all the products listed in the application and the applications needs to be divided. Thus, the goods based on use in commerce could proceed while the goods that were filed based on intent-to-use would be the subject of the filing of an extension or several extensions to prove use of the mark in regard to the products that were not as yet sold in interstate commerce or shipped to the United States. At least, the Notice of Acceptance by the USPTO of the actions by the applicant needs to be available before an intent-to-use application can serve as the basis for an International Registration. Moreover, a discussion with the client would be required in order to determine if the filing of the Madrid Protocol application should be done claiming rights to the use application and leaving pending the decision on the intent-to-use application that resulted from the division. Clients sometimes require an immediate international filing without understanding the consequences of a rush filing.

We must keep in mind that if the basic application or registration is abandoned or canceled anytime during the first five years after the International Registration is issued, then all foreign applications and registrations that are based on the International Registration will automatically be canceled. The canceled marks can be converted into national applications but the cost to do that is quite high and the effort is substantial. This is the main reason why the decision on the timing and basis for filing the Madrid protocol application is crucial. In this regard, it is also recommended that searches be conducted on a worldwide basis to determine if the subject mark is available for registration in the countries of interest to the client.

If the International application is based on a mark subject to more than one registration in the home country, the actual registrations need to be identical. Several issues were encountered during the adoption in the United States of the electronic system. Not all the paper applications have the same wording and codes as subsequent U.S. electronic filed applications. For instance, we have experienced that a paper application filed for a client in 2006 did not have a claim for a standard character mark or its equivalent, whereas the subsequent identical mark, filed electronically in 2016, had that claim. The first registration would be considered by the USPTO as a stylized mark but the second registration (standard character mark) would be considered as a wordmark since it did not claim any font, style or design elements. A standard character mark is a trademark claim over a non-stylized form of the mark. The filing of a single Madrid Protocol application based on these two registrations (although visually identical), would have been rejected by the Madrid Protocol division of the USPTO on the basis that these two marks were different.

Another issue that needs to be taken into consideration is the examination of the application in the foreign designated member countries as well as dealing with the irregularity letters often issued by WIPO.

In a case involving the filing of a Madrid application for a trademark registered in the U.S. covering a “full line of clothing “, an objection was received directly from the WIPO requesting a list of each item covered under a “full line of clothing”. The USPTO certified that the application reflected the exact information on the U.S. registration certificate and yet, this was not enough for WIPO, which required more specific information regarding the goods. However, regarding goods and classes, in a Madrid-based application, it is not possible to move goods between classes or add classes to the application or modify the marks. The mark itself cannot be changed. On the other hand, the USPTO allows “ non-material changes” to a mark during the prosecution and after issuance of the registration (Section 7(e) of the Trademark Act). The foregoing will be a problem regarding Madrid Protocol filings.

The examination of the application by each designated country could become expensive because, at that point, local professionals would need to be retained to submit answers to the objections. Some of the objections may be simple, some are more complex and require clients to understand that this is part of the process. Some contracting countries may decide to limit the scope of the trademark protection and request changes to the specification of goods and services. One of the advantages of this system is that the IP offices need to make a decision within 12 to 18 months which is a relatively short period of time. However, national offices have the discretion to push that timing back.

The Madrid Protocol has helped many businesses to develop a good international trademark portfolio but it is important to be aware of the advantages and disadvantages and how to deal with same.