International Trademark Registrations

U.S. trademark registrations do not provide any protection beyond the borders of the United States.  As a result, most companies register their trademarks in countries where they conduct business and where counterfeit operations may be likely.  Foreign trademark protection can normally be obtained through two methods; each has its own respective benefits and drawbacks.

Filing Directly in Foreign Countries

Direct foreign filing uses local counsel in each country in which protection is sought to assist in procuring trademark registration.  If filed within 6 months of filing the parent U.S. trademark application, there is an opportunity to claim priority to the U.S. trademark application, which backdates the foreign filing date to the original U.S filing date.  As foreign counsel will be required in each country, this option be costly and redundant.

Filing Through The Madrid Protocol

The Madrid Protocol is a centralized system for filing foreign trademark applications, organized by the World Intellectual Property Organizaion (“WIPO”).  A vast number of countries around the world, including the US, participate in the Madrid Protocol.

International trademark protection sought through the Madrid Protocol proceeds from a trademark application filed in any one of the Protocol’s member countries.  BY way of example, when a trademark application is filed with the USPTO, or if there is an existing US registration, a Madrid Protocol international registration application can be launched off the U.S. application or registration.  The international application is filed with the USPTO, validated, then sent to WIPO in Geneva.  The applicant may designate which countries it wished to register the trademark in and pays fees for each country and for WIPO, and WIPO sends the international application to the designated countries.  Communications about the progress of the applications in each country are then directed to the trademark attorney via WIPO.

Benefits include a centralized process, similar timelines which simplify renewal of the registrations, and easier communication through WIPO.  Furthermore, the Madrid Protocol is generally less expensive when filing in 4 or more foreign countries.  Finally, the Protocol is relatively quick because it is based upon the initial work done through the USPTO on the parent U.S. application.

There are drawbacks, however.  First, some countries allow for broader descriptions of the goods or services with which a mark is used than the U.S. does.  The Madrid Protocol, however, requires that the goods and services description in the international application be no broader than that in the base application.  Thus, if one country would have allow a broader description for a particular trademark in a way that would have been commercially significant, it may be prudent not make a Madrid Protocol filing.

A Madrid Protocol is also vulnerable to what is called a “central attack.”  The individual foreign trademark registrations remain dependent on the US application for five years.  If the US application or mark is abandoned or narrowed, each foreign trademark is affected in a similar way.  Thus, the US base application for a Madrid Protocol filing can be attacked in an effort to limit or eliminate the foreign rights at the same time.  There is a process for nationalizing each foreign application and making them independent if such attack occurs, but it can be expensive.

If an application does encounter issues at a foreign trademark office, then the costs of filing directly with foreign counsel are not really saved.  Foreign trademark offices require that local counsel prosecute the trademark application.  If problems arise, foreign associates must be contacted to help with the application.  Thus, the foreign costs that would have spent in a direct filing are then spent in prosecution; though these likely would have been spent in either case.

Lastly, not all countries are participating members.  If the country in which protection is sought isn’t a Madrid Protocol member, then the process simply cannot be used and a direct foreign filing must be made.