Utilizing The Madrid Protocol

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Utilizing The Madrid Protocol

• Todd S. Bontemps, Esq.Cooley Godward
  LLPChristian LarsenCooley Godward LLP

Legal Texts regarding the Madrid System
http//www.wipo.int/madrid/en/index.html
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The Madrid Protocol

• What is it?
• When, How and Why should we use it?
• What are the Pros/Cons?

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Quick Summary

• One Application, one fee, yields an International
  Registration (IR) which provides protection in
  multiple countries.
• One renewal deadline (with 10 yr. terms), One
  registration number and One
  filing possible for amendments and transfer of
  ownership.
• Addl Countries may be designated at any time.
• Organizations may contract to the MP

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The Madrid System (Madrid Agrt vs. Madrid
Protocol)

• The US is now a party to the Madrid Protocol (but
  not the Madrid Agreement) and filings are
  expected to commence in November or December
  2003.
• A List of Contracting States may be found at
  http//www.wipo.int/madrid/en/members/pdf/members.
  pdf (see Attachment A)

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MA, MP, MA/MP ?

• A US entity may designate any MP or MA/MP country
  in its IR. However, a US entity may not
  designate an MA-only country.
• Conversely, any MP or MA/MP country may designate
  the US in its IR

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What Is It?

• MP Application is a procedure for filing multiple
  foreign applications, and is
• Based on a national application or registration
• In French or English
• Subject to an 18 month examination process (see
  opposition exception, up to 7 months)
• Paid for with a single fee.

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Fee Breakdown

• Basic Filing Fee
• Designation Fee
• Intl Class Fee (beyond initial 3 classes)
• Handling Fee
• List of current Fees
• http//www.wipo.int/madrid/en/fees/pdf/fees.pdf
• (see Attachment B)

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MP Filing Procedure (US Office of
Origin)
USPTO IR Request submitted The Request
mayaccompany the Origin App.
USPTO Certifies the IR i.e. conforms to
corresponding US app/reg.
Examined in each of the Designated Countries
WIPO Forwards Requests to Designated Countries
WIPO Confirms Basic Reqs Met
USPTO Forwards IR to WIPO 2 MO Deadline to
retain Origin App. date
YES
NO
WIPO Returns to USPTO for correction 3 Mo.
Deadline
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Country of Origin Defined

• Applicants country of origin is any country
  party to the Protocol and where
  Applicant
• has a real and effective industrial or commercial
  establishment, or
• domicile, or
• is a national

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Office of Origin

• Date of Office of Origin Application is the
  IR Effective Date
• The IB does not examine marks for registerability
  or cite identical similar marks. Examination
  and/or citations are handled by the offices of
  the designated countries
• A change of ownership may change whether the MA
  or the MP governs an IR.

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Madrid Protocol Pros

• Basic filings may be made without obtaining local
  counsel.
• Paris Convention priority can be claimed without
  the need to institute separate national filings.
• Additional countries may be designated at anytime
  (e.g., the EU may be designated once it accedes)
• After 5 years the IR registration becomes
  independent of the origin application/registration
  
• Renewals and amendments to foreign registrations
  - single form, single fee.
• IR will envelope prior national MP or MA/MP
  member trademark registrations.

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Pros (contd)

• Renewals and amendments to foreign registrations
  - single form, single fee.
• IR will envelope prior national MP or MA/MP
  member trademark registrations.

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Cons

• IR is dependent on the initial application or
  registration of origin (home application/registrat
  ion) for a 5 year period.
• Amendments or cancellation or withdrawal of the
  application or registration of origin is a
  central attack to the entire IR
  application/registration.

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Cons (contd)

• Due to the shortened examination period required
  by the MP (12-18 mos.), the USPTO is
  likely to require e-filings and may need to
  reduce Response to Office Action deadlines.
• The procedures and rules for amending a mark
  (i.e. material alteration) may not translate to
  the resulting IR

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Cancellation

• Under the MP, an IR is dependent on the home
  registration for 5 years, however,
  should the home registration be successfully
  cancelled, the IR may be converted to national
  registrations (in those countries where the IR
  was not rejected) with the same priority date as
  the original IR.

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Converting National

• An application which is rejected may be converted
  to independent national applications although no
  IR registration will issue (rights will be
  preserved partially)

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Foreign / US Counsel

• Likely OATriggers
• Color applications are submitted to the USPTO in
  black white and this procedure does not comply
  with the IB. A second drawing of the mark in
  color will be required.
• Goods / Services descriptions will often be
  overly broad

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Misc.

• NEW Filing Basis - The MP adds a fifth filing
  basis for registration. Section 65(a) foreign MP
  applicants can file as MP registrants.
• Double Publication - The issues surrounding
  publication in the WIPO Gazette and republication
  in the US OG, as well as the issues surrounding
  extensions to oppose and the 7 month deadline
  imposed by the MP, are still up in the air.

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Hypo

• Software company based in Seattle.
• Has a subsidiary office in Australia, and has 3
  distributors in the UK.
• Wants to file SiCLone mark in
• US, Canada, Australia, UK, Germany, Norway,
  Japan, Singapore, and China

CLIENT
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Hypo

• Hey, Thanks A Bundle, Cooley!