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Trademark Protection Underthe Madrid Protocol:Strategic Considerations
Presented by John Scruton
Advantages of the Madrid Protocol
• Ease of Application• May Reduce Costs• Centralized Maintenance
Disadvantages of the Madrid Protocol
• IR is tied to the Basic Application–Limits on description–Subject to “central attack”
• May be more expensive
Advantage: Ease of Application
• Single filing with US Patent and Trademark Office
• Filing in one language–English works
• Potential to extend protection to 91 countries
Ease of Application
• Efficiently secure priority in a large number of countries– Importance of priority
• Efficiently obtain protection in a large number of countries– Registration more important abroad
Ease of Use
• Not necessary to engage local counsel– But sometimes a good idea anyway• Searching• Prosecution
• Centralized location for– Renewals– Address and name changes– Recording assignments and licenses
Advantage: Flexibility
• Ability to later designate additional countries for protection
• Ability to assign rights for individual countries–Compare CTM – all or nothing
Disadvantage: Limitations• Limited to Basic Application/Registration• Mark must be the same– No separate marks for different markets
• Description of goods and services may not exceed the basic application/registration– U.S. system is more restrictive than abroad
A Foreign Registration
A Foreign Registration, cont’d
A Foreign Registration, cont’d
Disadvantages: Central Attack
• IR is tied to the success of the Basic Application/Registration– Basic application may never become registered
for a U.S.-specific reason– Basic registration may be cancelled for a U.S.-
specific reason• Likelihood of confusion with mark used only
in U.S.• Other technical reasons, e.g. disparagement
(is REDSKINS considered disparaging abroad?)
Limitations on Disadvantages
• IR stands on its own after 5 years• Failed IR may be converted to
National Applications and retain IR’s priority–Additional unplanned expense
Disadvantages
• No ability to amend the mark• New countries added after
registration are on the IR’s timeline–Does not enjoy a full 10-year term
Strategic Considerations
• Goal: Broadest Possible Rights• U.S. companies may want to consider
alternatives– Applications not limited to U.S. description of
goods allow broader protection– Potentially use another country for basic
application• National of, domiciled in, or “real and
effective industrial or commercial establishment” in another Madrid country?
Goal: Limit Costs• Madrid advantages: –Simplified initial application–Simplified renewals and maintenance
• Searching and prosecution costs similar to national applications
Madrid Filing Costs• Fees vary widely between member countries• Structure of fee (all fees are in Swiss francs):
– Basic filing fee: 653– Basic supplementary fee for classes beyond 3: 100– Basic complementary fee for each designated
country: 100– Madrid Protocol countries may have individual fees
that vary country to country
• Fee calculator at: www.wipo.int/madrid/en/fees/calculator.jsp
A Sampling of Individual Fees
• Belarus: 600 + 50/class beyond 3 classes• China: 249 + 125/class beyond 1 class• Cuba: 2-part filing fee 274 + 82, + 91/class past
3• EU: 1,111 + 192/class beyond 3• UK: 262 + 73/class beyond 1• India: 51 + 51/class beyond 1• Japan: 2-part fee 99 + 328, + 75/class beyond 1• Oman: 484 + 484/class beyond 1• San Marino: 178 + 47/class beyond 3
Fees in the Stans
• Tajikistan: 420 + 16/class beyond 1• Turkmenistan: 178 + 90/class
beyond 1• Uzbekistan: 1,028 + 103/class
beyond 1
Goal: Broadest Geographic Coverage
• Madrid is good but may require supplementation
• 91 countries under the Madrid Protocol–Albania to Zambia
Madrid Map
Non-Signatories• Argentina• Brazil• Canada• Indonesia• Malaysia• Pakistan• South Africa• Many others in South America and Africa
Goal: Maximum Protection Against Third Party Claims to the Mark• Madrid allows quick and efficient filing in
much of the world• Priority as of ITU filing date
Goal: Flexibility• Madrid does not allow changes to the mark
– U.S. allows minimal changes that do not alter the commercial impression
• No different marks in different countries• Madrid limits assignment to those in Madrid
countries• Madrid allows assignments of rights in less
than all countries– CTM is a unitary system: no piecemeal
assignment
Licensing• Some may require recording of licenses– Madrid allows central recording
• Recording of “registered users” in some so that use by licensee inures to licensor
• Government approval of licensees may be required
Office of Origin
• Flexibility where applicant has operations in multiple Madrid countries
• Consider for breadth of description• Consider for strength of application or
existing registration– Avoiding central attack
Madrid and CTM• Failed CTM application may be converted
to national applications• Failed Madrid application designating EC
may be converted to CTM– Opportunity to address issues that led to
refusal by limiting CTM application– If converted CTM application fails, may still
convert to national applications
• Cost: CTM basic fee €900 + €150 per class > 3
Other Issues• Registrability may vary in member
countries–Distinctiveness may be harder to show–National examination
• Use may be required–Required for registration in U.S.–Non-use may be grounds for
cancellation in other countries
