May 13, 2003

The Madrid Protocol: Sea Change or Tempest in a Teapot?

Holland & Knight Newsletter
Paul F. Kilmer

The Madrid Protocol (Protocol) has been held out as a way for trademark owners to extend protection to more than 50 nations in a cost-effective, one-stop process. Since it is likely that U.S. regulations implementing the Protocol will go into effect on November 2, 2003, trademark owners shortly will have the option of using this device to extend their protection abroad.

Ideally, the procedure under the Protocol is for a trademark owner to file an application in its “home country” and then ask that the application be sent to the International Bureau (the World Intellectual Property Organization — WIPO — in Geneva, Switzerland) for international registration and subsequent “extension” to some or all of the nations that have implemented the Protocol.

If effective, the Protocol will produce substantial cost savings over the current system, which consists of filing “national” applications in each nation or group of nations (such as the European Community) where protection is desired. The Protocol may not always be the best way to obtain international trademark protection, however, and it poses some significant risks for trademark owners that are not generally featured in the promotional materials from WIPO or the U.S. Patent and Trademark Office. For example, in the U.S., the goods or services in a trademark or service mark application often must be described in almost painful detail. In most instances, any change in the description of goods or services in the U.S. application will result in identical changes to every “extension” application filed through the Protocol mechanism. If “national” applications are filed instead, a number of nations will accept very broad claims of goods and services, thus giving the trademark owner greater protection in those countries.

The “extension” filings under the Protocol remain dependent upon the continued existence of the “home country” filing for five years. If the “home country” application does not attain registration or the registration is cancelled or successfully challenged within the five-year term, all of the “extension” filings are nullified. Under the Protocol, there is the possibility of “converting” or transforming the extension filings to new national applications. This conversion or transformation process will incur additional costs that eliminate any savings the trademark owner reaped under the Protocol and will also delay the various national registrations.

If the trademark is arguably descriptive, a surname or a geographical reference, there is a risk that it might end up being registered on the U.S. Supplemental Register. Such marks may not be entitled to extension protection under the Protocol, but might have a chance for national registration if filed directly.

Under the Protocol, the form in which a mark is filed in the applicant’s “home country” dictates the form in which it will be extended to all other nations, and the wrong choice can be fatal. For example, the U.S. is fairly liberal in allowing registration of marks consisting of a single letter or a double-letter combination (for example the simple, typed letter “V” has been registered by different parties for “periodical magazines,” “protective gloves,” “dietary and nutritional supplements,” and “chemicals”). However, many nations will not register single-or double-letter marks unless they are in color or part of a logo or some other device. Therefore, filing a single-letter mark in the U.S. and seeking to extend that filing under the Protocol may result in refusals of registration by numerous nations. This problem can often be avoided by making national filings under the rules of each nation’s practice (e.g. if a nation will register a single letter mark only if it is in color, a national application can be filed in color there and in black-and-white in the United States).

If a Protocol extension is being handled by outside counsel, there is a risk that communications (including various national refusals of registration) may be directed to the applicant, not its outside counsel. This can lead to loss of rights if official communications are misplaced by the trademark owner or not promptly forwarded to the trademark owner’s outside counsel. 

Any extension registrations obtained through the Protocol remain completely dependent upon the international registration (at the International Bureau of WIPO) remaining in force. If the trademark owner, through an oversight, fails to renew its international registration, ALL of its extension registrations will be cancelled.  The risk of this occurring with a series of national registrations is minimized by the fact that a domestic filing agent will be used in each country and that agent will generally remind the applicant or its outside counsel when maintenance of the national registration is required. This additional failsafe, as well as grace periods in most nations, will generally prevent the loss of rights.  In addition, even if errors are made in maintaining one in a series of national trademark filings, the most that the trademark owner will stand to lose is a single registration in one nation — not a cascading domino effect of all of its extension registrations being cancelled through inadvertent failure to maintain its international registration.

No amendment of internationally registered marks is permitted. Under the practice in a number of nations, however, including the United States, amendments of national registrations may be permitted under certain circumstances. Therefore, if your mark (such as a logo) is likely to be updated over time, it may be best to use the national filing systems rather than the Protocol. 

With these issues lurking in the background, trademark owners should very carefully consider whether to file under the Protocol rather than through national registration systems.

READ: The Madrid Protocol: Sea Change or Tempest in a Teapot?

Related Insights