Antoinette M. Tease Montana Patent
Intellections
Madrid Protocol: International Protection for Trademarks Is Now Available in the U.S.

On November 2, 2003, the United States of America became a party to the Madrid Protocol, and the U.S. Patent and Trademark Office (USPTO) began accepting international trademark applications. In 2002 alone, over 22,000 international trademark applications were submitted worldwide. The international trademark registration system is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, although applications are filed with the patent office of the "country of origin" (which is the country of which an individual applicant is a national or in which a corporate applicant is domiciled). Unlike an "international" patent application, which must be prosecuted in each country in which patent protection is desired, international trademark registration affords the applicant protection in every country designated on the application, without the necessity of retaining foreign trademark counsel.

There are 74 countries that are parties to the Madrid Protocol (the "Protocol"), the Madrid Agreement (the "Agreement"), or both. An application for international registration must designate one or more countries, other than the country of origin, in which the mark is to be protected. The applicant must specify whether a designation is being made under the Protocol or the Agreement. Under the Agreement, which was first entered into in 1891 and has been revised several times since then, the applicant must have an existing registration for the same mark in the country of origin, and the international application must be in French. Under the Protocol, which was adopted in 1989, the applicant must have either an existing registration or a pending application for the same mark, and the application can be in French or English. Designated countries must be members of the same treaty (Protocol or Agreement) as the country of origin. Thus, for applicants filing in the U.S., all designations will be under the Protocol. A list of Madrid Protocol member countries can be found at http://www.wipo.int/madrid/en (click on "countries").

An international trademark registration is effective as of the date on which it was filed with the country of origin, provided it was received by the International Bureau (IB) within two months after that date; otherwise, the effective date is the date on which the application was received by the IB. Priority can be claimed back to a previously filed national or regional trademark

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application, as long as the prior application was filed within six months of the filing of the international application. The IB notifies each country that has been designated in the international application, and each designated country has the right to refuse registration with a time frame set in accordance with the Protocol or the Agreement. The time period for refusal is generally twelve months, although under the Protocol, a country can extend this period to eighteen months (or longer in the case of a refusal based on an opposition). The U.S. has elected an eighteen-month refusal period. Unless the IB receives notice of refusal during the applicable time period(s), the mark is deemed protected in the designated countries as if it had been registered by the trademark authorities in those countries.

Once registered, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks. After registration, the owner of an international trademark registration can designate additional countries in which the mark is to be protected. An applicant can also record changes in ownership, restrictions on the scope of the registration (i.e., a narrowing of the goods or services protected), or changes in correspondence addresses. For the first five years after registration, the fate of the international application is dependent on the status of the application or registration in the country of origin. Thus, if the registration in the country of origin is canceled, non-renewed, or declared invalid by a court of competent jurisdiction, then the international registration also ceases to have effect. After five years, however, the international application is deemed independent of the registration or application in the country of origin. An international registration is effective for ten years and can be renewed every ten years upon the payment of renewal fees.

Upon filing of the international application, the applicant must pay a basic filing fee of 653 Swiss francs, a designation fee (which is either a standard fee of 73 Swiss francs per country or an individual designation fee set by the designated country), and a supplementary fee if the mark is to be registered in more than three classes. In addition, the USPTO charges a certification fee of $100 per class if the international application is based on a single U.S. application or registration ($150 per class if the international application is based on more than one U.S. application or registration). In order to determine whether an international trademark application is cost-effective for your business, please consult a qualified trademark attorney.

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Patent Law for the New West
The information in this newsletter is provided for informational purposes only and should not be considered legal advice. Please consult a qualified attorney for advice on a specific legal matter.

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