Foreign trademarks Featured

5:31am EDT June 30, 2003
Have you experienced the nightmare of foreign trademark filings? If someone asked what would simplify the process of registering a trademark in a foreign country, you might respond, "Give me a single application with boxes to check for all the countries I want and allow me to file it in the U.S. Patent and Trademark Office with U.S. currency."

Here's good news: What you probably considered a trademark fantasy is about to become reality.

The Madrid Protocol, or simply the Protocol, is scheduled for implementation in the United States Nov. 2, 2003. It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.

The advantages

The Protocol will permit an applicant to file for trademark protection in multiple member countries (for a complete list, visit www.wipo.int/madrid/ en/index.html) using one application filed in the U.S. Patent and Trademark Office (USPTO). The fee depends upon the number of countries selected.

This streamlined process results in a single trademark registration with a single registration number and renewal date that provides protection in each member country in which the application passes that country's examination. Cost savings, time efficiency and streamlined maintenance are the primary advantages to the Protocol.

The disadvantages

The Madrid Protocol is not a perfect, one-size-fits-all solution for every trademark owner. Disadvantages include:

* Local counsel must be retained to respond to Office Actions.

* The applicant obtains protection only in the selected countries, rather than uniform protection in all member countries (you may wish to compare to a Community Trade Mark in the European Union).

* For the first five years, the Madrid Registration is dependent upon the good standing of its corresponding basic application (discussed below).

* Madrid registrations cannot be assigned to entities in nonmember countries.

How to obtain registration

To obtain a foreign trademark registration under the Madrid Protocol, an individual or business that resides in a Protocol member country must own a home country trademark application or registration.

This national application or registration is the basis for a Madrid Application and is referred to as the basic application or registration. The basic application and the Madrid Application can be filed simultaneously.

The Madrid Application is sent to WIPO, which confirms that the necessary requirements have been met and publishes the mark in the WIPO Gazette of International Marks. WIPO then forwards the Madrid Application to the selected member countries for examination and approval.

Although not quite a dream come true, the Madrid Protocol promises to greatly alleviate the nightmare of foreign trademark filings.

For more information on foreign trademark filings, contact an attorney. Reid M. Wilson is an attorney in the Washington, D.C., office of Vorys, Sater, Seymour and Pease LLP, where he practices in the Technology and Intellectual Property Group. He can be reached at (202) 467-8825, rmwilson@vssp.com, or by visiting www.vssp.com.