Since 2003, trademark owners in the United States have been able to file a single application in the U.S. Patent and Trademark Office and extend the application to include numerous foreign countries, and likewise extend existing federal applications and registrations. As of February, 2016, over ninety countries, including the United States, and the European Union and African Intellectual Property Organization as entities, are parties to the international registration system known as the Madrid Protocol.
Now is the time to devise your global trademark registration strategy. Filing under the Madrid Protocol can cost significantly less than filing separately in foreign countries. Review frequently asked questions below. contact us if you have any additional questions.
The Madrid Protocol (the "Protocol") is an international treaty which came into operation in 1996. It is part of the so-called "Madrid System", which is comprised of both the Protocol and the Madrid Agreement Concerning the International Registration of Marks (the "Agreement."). The Agreement dates from 1891 and has been revised several times. Historically there were objections to various provisions of the Agreement which prevented some countries from joining, notably the United States. The Protocol was created to address these objections. After resolving a dispute primarily over voting rights, the United States acceeded to the Protocol and its provisions went into effect in late 2003. Now businesses in the United States can extend their U.S. registrations and applications into many foreign countries.
The obvious advantage is the ability to file a single application in the U.S. Patent and Trademark Office and designate additional countries in which registration is sought. It will no longer be necessary to hire a separate law firm in a foreign country to obtain a registration, which has typically been both costly and complicated.
Nevertheless, the Protocol raises some complications of its own. Although the Protocol facilitates multi-country registration, the trademark laws of the separate member countries will continue to govern the extensions of the International Registration into those countries. This will raise some inconsistencies. For example, in a U.S. application, the allowable identification of goods and services bearing the mark is narrow compared to most other countries. Since the International Registration can be no broader than the identification in the U.S. registration, there may well be a disadvantage to U.S. companies in protecting marks abroad.
Also note that not all countries are parties to the Protocol, and companies must continue to file separate applications in these countries. Notably, Canada and Mexico are not members to date.
The cost depends on how many countries are included in the application, and several other variables. The total cost will be significantly less than the cost of filing in several countries separately.
There are processing fees paid to both the U.S. Patent and Trademark Office (PTO) and to the World Intellectual Property Law Organization (WIPO). PTO Fees. To certify a newly-filed application in the PTO to be an international application: $100 per class. If the international application is based on more than one application or registration: $150 per class. There is a standard U.S. filing fee of $ 275.00 or $325.00 per class (depending on whether you can use the standard identification of goods or must submit a custom one), which applies to all applications, whether or not international. WIPO fees. A basic fee of 653 Swiss francs (which amounts to about $702 in U.S. dollars as of February 18, 2016) unless the mark includes a claim of color, in which case the basic fee is 903 Swiss francs (or $970). In addition, you pay either a standard designation fee of 73 Swiss francs ($79) for each designated country, OR an individual designation fee which is an amount fixed by the individual country (this amount can not be higher than the fee for registering the mark directly with the country.) You also pay a supplementary fee of 73 Swiss francs ($79) for each class of goods or services beyond the third, except where all the countries designated have individual designation fees. Finally, you will pay your attorney to prepare the application. Contact us for information about our legal fees.
Click here to access the fee calculator at WIPO. These fees are in Swiss Francs. To translate to American dollars, multiply the total figure by 1.036. To this figure, add the PTO fees and your attorney's fees to arrive at a total figure. This figure will, of course vary with the currency exchange
Symbus can prepare and file an application on your company's behalf. The international application will be filed in the U.S. Patent and Trademark Office ("USPTO"), naming the additional countries in which registration is sought. The USPTO will forward the application to the International Bureau of the World Intellectual Property Organization ("WIPO") which is headquartered in Geneva, Switzerland.
The International Bureau will examine the application to ensure that all formalities have been met, issue an International Registration, publish the particulars of the registration in the WIPO Gazette, and forward information to the trademark offices of each country in which registration is sought. Each country examines the application in accordance with its own trademark laws, and has a deadline for informing the International Bureau of any objections to registration. If no objections are raised, the registration issues, and protection in each designated country is the same as if the mark had been registered directly by that country.
The registration lasts ten years, and can be renewed for subsequent ten year terms.
The "basic" application is the application that you file in the United States. If the basic application fails, the international application fails as well. The basic application may be denied registration by the Patent and Trademark Office on a number of grounds. For example, the mark may be deemed confusingly similar to another existing mark, "merely descriptive", or generic. Or it may survive examination but be opposed by another company once it is published in the Official Gazette. Before you file, you should obtain an opinion as to availability and registrability from a trademark attorney. Extensive searching is, and always has been, highly important before adopting a trademark. With the advent of the international registration, searching is even more critical, as you will be competing for marks globally.
Although the basic application in the U.S. is successful, the mark may be denied registration under the laws and regulations of the foreign country in which additional registration is sought, or it may be opposed by another company or entity in the foreign country. Should this occur, it will be necessary to retain counsel in that country to try to overcome such obstacles.
Strong, arbitrary, non-descriptive marks have the best chance of surviving this minefield. You will want to think about developing a unique mark (i.e. a "coined" word or term) that signifies only the goods or services of your company. Then search the mark in all major languages to find any discernible meaning. Should you select descriptive or highly suggestive marks (marks which immediately convey what it is you sell or provide), you should be prepared to spend considerable money over the years to protect it. If the mark is obvious, numerous other companies will likely adopt the same or highly similar mark for the same kind of product or service.
During the first five years, the international registration is dependent on the basic application or registration originating in the U.S. Patent and Trademark Office. Thus if the basic application or registration is rejected, cancelled, or abandoned, the international registration fails as well (although the application can be converted to separate applications filed in the individual designated countries.) After five years, the international registration generally becomes independent of the basic registration.
The International Trademark registration is maintained on the International Register under the auspices of the World Intellectual Property Organization ("WIPO"). You can record changes of name and address, changes in ownership, and renewals, which are effective for all of the designated countries in which the mark is registered. You can also record a limitation of goods or services with respect to all or some of the designated countries.
Yes. The international application can claim the filing date of the basic application filed in the United States within six months of that date.
Yes. International applications can be based on both applications and registrations that are in force, that is, they are not cancelled, abandoned, or expired.
As of February 1, 2016, the following countries and entities are parties: African Intellectual Property Organization (OAPI),Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Bulgaria, Cambodia, China, Colombia, Croatia, Cuba, Cyprus, Czech Republic, Democratic People's Republic of Korea, Denmark, Egypt, Estonia, European Union, Finland, France, Gambia, Georgia, Germany, Ghana, Greece, Hungary, Iceland, India, Ireland, Iran, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgvzstan, Lao, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Madagascar, Mexico, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, New Zealand, Norway, Oman, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Rwanda, San Marino, Sao Tome and Principe, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, The Former Yugoslav Republic of Macedonia, Tunisia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam, Zambia, Zimbabwe.
As noted, the European Community is a member of the Madrid Protocol as an entity. The following are members of the European Community: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, United Kingdom.