Global Branding Trademark Protection in the International Marketplace

If you think trademark protection is all about obtaining a federal registration of a mark in Washington, think again. The time to think globally is now.

The Paris Convention

In 1883, the Paris Convention was concluded, marking the first major international agreement concerning industrial property. Since its inception, the Paris Convention has been amended numerous times and has been signed by over 150 nations. Focusing on all types of industrial property ' including patents, trademarks, service marks, industrial designs and geographical indications ' the Paris Convention had at its core the concept of “national treatment.” Each nation was required to treat registrants for protection on equal footing, regardless of the nationality of the applicant.

While not an international filing agreement, the Paris Convention did establish general industrial property rights that could be obtained by anyone. With national treatment, one could file for protection in any country that was a member of the Paris Convention. Priority for trademarks was also given a 6-month cushion, allowing a trademark owner to use its initial filing date in its home country as the filing date in other countries as long as the other applications were filed within 6 months of the first application.

A huge step forward toward normalizing intellectual property protection worldwide, the Paris Convention established a few common rules that member countries are required to follow. As a result, local counsel in a foreign country is still required to file and register the trademark. Local counsel is also needed for prosecution of infringement of trademark rights. There are also relatively high administrative costs related to use of the Paris Convention registration scheme.

The Madrid Protocol

Soon after the implementation of the Paris Convention, the Madrid Agreement was established as an international filing agreement. However, for a variety of reasons the United States has never signed the agreement. With the Paris Convention in place, some attempts have been made to establish an international filing agreement. One such agreement is the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, or Madrid Protocol. While the Madrid Protocol began operation in 1996, the United States was slow to join. On Nov. 2, 2003, the U.S. finally signed on to be a member of the Madrid Protocol. Membership brings the possibility for U.S. trademark owners to expand their rights to 60 or more countries with one simple filing.

Nuts and Bolts of the Madrid Protocol

How does a trademark owner use the Madrid Protocol? An owner must first file for or have a basic registration with the U.S. Patent and Trademark Office (USPTO). A basic registration is a regularly filed trademark application or registration. The basic application forms the basis of an international application that the USPTO must first certify. To be certified, the international application must have the same information and scope as the basic registration.

It needs the same owner, the same mark, the same or narrower goods and services. The USPTO then certifies the international application and forwards the application on the World Intellectual Property Organization (WIPO). On the international application, the applicant designates which countries it is seeking a registration in.

WIPO then reviews the application for any nonsubstantive irregularities. If none are found, the application is recorded on the WIPO International Register as an International Registration (IR). By having the mark registered, the applicant gains the right to apply for registration in the designating countries. WIPO then forwards the extension of protection request to the appropriate office for the designated country.

The designated country then has 18 months to accept or reject the mark. If accepted, the trademark has all the rights afforded an owner of a trademark in that country. If rejected, the party may appeal the rejection in a manner similar to if the owner had filed directly with the country for trademark protection.

IRs remain dependent on the basic application for 5 years, and during that time are subject to “Central Attack.” If in those 5 years the basic application is successfully opposed/cancelled, the IRs are lost and the owner has 3 months to transform the IRs into national registrations. Following 5 years, the IRs become independent of the basic application.

Priority in the Madrid Protocol is based on the date of filing the international application with WIPO. If the international application is filed within 6 months of obtaining the basic registration, the 6-month Paris Convention priority rules will also apply. Any subsequent requests for extension of protection will bear the date the request for extension was filed with WIPO.

Madrid Protocol Advantages

The advantage of the Madrid Protocol lies in the ease of administration. Renewals, changes of ownership, and assignments can all be accomplished by filing once with the WIPO office, which will then notify the designated countries where the trademark is registered. Subsequent designations ' extensions of the IR to cover other member countries ' can similarly be requested and filed. An owner is not required to contact each country's trademark office separately. The Madrid Protocol also allows for two methods of policing one's mark: One can oppose individual extensions separately; or use a “Central Attack.” The potential effect of a Central Attack may allow an owner to obtain concessions in exchange for agreement not to utilize it.

The Madrid Protocol implements an administrative scheme that helps realize the goals of the Paris Convention. Use of the Madrid Protocol does have its drawbacks in comparison to solely relying on the Paris Convention.

Madrid Potential Disadvantages

Extension of protection using only the principles established by the Paris Convention, while slow and piecemeal, does not open a mark owner to the possibility of Central Attack ' the possibility that the application or registration which forms the basis of the Madrid application may fall. Also, as filing for trademarks in countries individually is not reliant upon a basic registration, the registration is not so limited. This is especially pertinent in the United States due to the strict requirements of the USPTO. Over 150 nations are parties to the Paris Convention, while just over 60 are currently signatories to the Madrid Protocol. For example, Mexico and Canada have not signed the Madrid Protocol. Finally, one may not be interested in acquiring “global” protection. If an owner only needs extension to one or two countries, use of the Madrid Protocol may not make sense.

Impact on Global Brands

The Madrid Protocol, and the U.S.'s membership, opens the door for all companies to obtain global brands, not just multinational corporations with a $1 million trademark budget. It allows for companies with limited resources to obtain wider protection of their intellectual property interests. Protection that is needed as technology shrinks the world we live in. Companies can no longer afford to remain U.S.-centric. A company's inability to police its marks overseas and across borders will render its trademarks useless over time. While the Madrid Protocol is not a perfect system, it is a solid platform for companies to use and begin establishing their global brands.

If you think trademark protection is all about obtaining a federal registration of a mark in Washington, think again. The time to think globally is now.

The Paris Convention

In 1883, the Paris Convention was concluded, marking the first major international agreement concerning industrial property. Since its inception, the Paris Convention has been amended numerous times and has been signed by over 150 nations. Focusing on all types of industrial property ' including patents, trademarks, service marks, industrial designs and geographical indications ' the Paris Convention had at its core the concept of “national treatment.” Each nation was required to treat registrants for protection on equal footing, regardless of the nationality of the applicant.

While not an international filing agreement, the Paris Convention did establish general industrial property rights that could be obtained by anyone. With national treatment, one could file for protection in any country that was a member of the Paris Convention. Priority for trademarks was also given a 6-month cushion, allowing a trademark owner to use its initial filing date in its home country as the filing date in other countries as long as the other applications were filed within 6 months of the first application.

A huge step forward toward normalizing intellectual property protection worldwide, the Paris Convention established a few common rules that member countries are required to follow. As a result, local counsel in a foreign country is still required to file and register the trademark. Local counsel is also needed for prosecution of infringement of trademark rights. There are also relatively high administrative costs related to use of the Paris Convention registration scheme.

The Madrid Protocol

Soon after the implementation of the Paris Convention, the Madrid Agreement was established as an international filing agreement. However, for a variety of reasons the United States has never signed the agreement. With the Paris Convention in place, some attempts have been made to establish an international filing agreement. One such agreement is the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, or Madrid Protocol. While the Madrid Protocol began operation in 1996, the United States was slow to join. On Nov. 2, 2003, the U.S. finally signed on to be a member of the Madrid Protocol. Membership brings the possibility for U.S. trademark owners to expand their rights to 60 or more countries with one simple filing.

Nuts and Bolts of the Madrid Protocol

How does a trademark owner use the Madrid Protocol? An owner must first file for or have a basic registration with the U.S. Patent and Trademark Office (USPTO). A basic registration is a regularly filed trademark application or registration. The basic application forms the basis of an international application that the USPTO must first certify. To be certified, the international application must have the same information and scope as the basic registration.

It needs the same owner, the same mark, the same or narrower goods and services. The USPTO then certifies the international application and forwards the application on the World Intellectual Property Organization (WIPO). On the international application, the applicant designates which countries it is seeking a registration in.

WIPO then reviews the application for any nonsubstantive irregularities. If none are found, the application is recorded on the WIPO International Register as an International Registration (IR). By having the mark registered, the applicant gains the right to apply for registration in the designating countries. WIPO then forwards the extension of protection request to the appropriate office for the designated country.

The designated country then has 18 months to accept or reject the mark. If accepted, the trademark has all the rights afforded an owner of a trademark in that country. If rejected, the party may appeal the rejection in a manner similar to if the owner had filed directly with the country for trademark protection.

IRs remain dependent on the basic application for 5 years, and during that time are subject to “Central Attack.” If in those 5 years the basic application is successfully opposed/cancelled, the IRs are lost and the owner has 3 months to transform the IRs into national registrations. Following 5 years, the IRs become independent of the basic application.

Priority in the Madrid Protocol is based on the date of filing the international application with WIPO. If the international application is filed within 6 months of obtaining the basic registration, the 6-month Paris Convention priority rules will also apply. Any subsequent requests for extension of protection will bear the date the request for extension was filed with WIPO.

Madrid Protocol Advantages

The advantage of the Madrid Protocol lies in the ease of administration. Renewals, changes of ownership, and assignments can all be accomplished by filing once with the WIPO office, which will then notify the designated countries where the trademark is registered. Subsequent designations ' extensions of the IR to cover other member countries ' can similarly be requested and filed. An owner is not required to contact each country's trademark office separately. The Madrid Protocol also allows for two methods of policing one's mark: One can oppose individual extensions separately; or use a “Central Attack.” The potential effect of a Central Attack may allow an owner to obtain concessions in exchange for agreement not to utilize it.

The Madrid Protocol implements an administrative scheme that helps realize the goals of the Paris Convention. Use of the Madrid Protocol does have its drawbacks in comparison to solely relying on the Paris Convention.

Madrid Potential Disadvantages

Extension of protection using only the principles established by the Paris Convention, while slow and piecemeal, does not open a mark owner to the possibility of Central Attack ' the possibility that the application or registration which forms the basis of the Madrid application may fall. Also, as filing for trademarks in countries individually is not reliant upon a basic registration, the registration is not so limited. This is especially pertinent in the United States due to the strict requirements of the USPTO. Over 150 nations are parties to the Paris Convention, while just over 60 are currently signatories to the Madrid Protocol. For example, Mexico and Canada have not signed the Madrid Protocol. Finally, one may not be interested in acquiring “global” protection. If an owner only needs extension to one or two countries, use of the Madrid Protocol may not make sense.

Impact on Global Brands

The Madrid Protocol, and the U.S.'s membership, opens the door for all companies to obtain global brands, not just multinational corporations with a $1 million trademark budget. It allows for companies with limited resources to obtain wider protection of their intellectual property interests. Protection that is needed as technology shrinks the world we live in. Companies can no longer afford to remain U.S.-centric. A company's inability to police its marks overseas and across borders will render its trademarks useless over time. While the Madrid Protocol is not a perfect system, it is a solid platform for companies to use and begin establishing their global brands.