Intellectual Property Master Class: Madrid Protocol: International Trademark Filing Regime

1
Intellectual Property Master Class Madrid
Protocol International Trademark Filing Regime

• David Mayberry
• Kilpatrick Stockton LLP
• August 11, 2003

2
Madrid Protocol What it is not

• It is not a substantive law of trademarks
• Makes no attempt to change or harmonize national
  trademark laws of any country or countries
  
• Not an international trademark law
• It does not provide a set of laws or rules for
  examining a trademark application to determine
  whether the mark should be refused or entitled to
  registration on substantive grounds

3
Madrid Protocol What it is not (contd)

• Every application is registered so long as it
  is filed in proper format
  
• It does not replace the examination of any
  trademark application by the countries into which
  the applicant requests to extend the protection
  of its mark those countries have the right to
  examine and refuse the application before the
  international registration will be enforced in
  that country
• It provides no substantive trademark rights
• All issues relating to legal rights represented
  by trademarks are determined by national law

4
Madrid Protocol What it is

• A process for filing trademarks in multiple
  countries through one trademark office in a
  Member State rather than separate filings through
  many national trademark offices
• Enables a trademark applicant to file a single
  trademark application which designates multiple
  countries into which the trademark applicant
  requests extension of protection of its mark
• Eliminates the need for filing separate trademark
  applications in each country of interest

5
Madrid Protocol Advantages

• No need for foreign filing associates fees
• Prospect of lower filing costs
• Saves time
• More efficient
• Paperwork managed by central clearinghouse
  International Bureau of the World Intellectual
  Property Organization (WIPO)
  

6
Madrid Protocol Advantages (contd)

• It provides a simplified process for renewing and
  maintaining trademarks
  
• Renewals, assignments and other maintenance
  activities (i.e. amendments to the descriptions
  of goods) are done by means of a single filing at
  the International Bureau of the World
  Intellectual Property Organization (WIPO)
• WIPO becomes a centralized clearinghouse for
  post-registration activities

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Brief Legislative History of the Madrid Protocol

• Madrid Protocol adopted in 1989 as a codicil to
  an earlier Treaty the Madrid Agreement which
  was adopted in 1891 and which first provided an
  arrangement for the International Registration of
  marks

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Brief Legislative History of the Madrid
Protocol (contd)

• Two major reasons for negotiating the Madrid
  Protocol Treaty
  
• Remove perceived limitations in the Agreement
  such as all applications must be filed in French
  Language
  
• To establish a link between the Madrid System and
  other intergovernmental regional trademark
  systems, specifically the Community Trademark
  System in Europe

9
Brief Legislative History of the Madrid
Protocol (contd)

• The Protocol allowed intergovernmental
  organizations such as the EU to join the treaty
  so long one of its member states adheres to the
  Paris Convention and a regional trademark office
  exists.
• Ironically, the link became an Achilles heel
  for accession to the treaty by United States
  because United States interpreted the Protocol to
  allow the European Union a separate vote in
  addition the votes of its member states in the
  governing Madrid Assembly

10
Brief Legislative History of the Madrid
Protocol (contd)

• The voting rights issue finally resolved by
  compromise in 2000 EU issued a statement that
  if a vote is required in the Madrid Assembly, it
  was the intention of the EU and its Member States
  to use their voting rights in such a way to
  ensure that the number of votes cast by the
  European Community and its Member States does not
  exceed the number of the European Communitys
  Member States,
• Although the compromise allowed the Protocol to
  get over a major hurdle, it did not immediately
  pave way for passage in the United States.
  

11
Brief Legislative History of the Madrid
Protocol (contd)

• The Protocol faced several more political
  challenges before accession finally passed both
  houses of Congress and signed into law by
  President Bush November 2, 2002
• With the deposit of its instrument of accession
  to the Madrid Protocol with the World
  Intellectual Property Organization, the United
  States becomes member of Madrid Protocol,
  effective November 2, 2003.
• The USPTO will begin accepting Madrid
  applications on November 2, 2003

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Who are Contracting Parties
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International Application Filing Requirements

• Application must be filed in English or French
• Basis for filing requirement
• Application must be based upon an application (or
  registration) previously filed in the Trademark
  Office of a Country or an Intergovernmental
  Organization (such as European Union) which is a
  member of the Madrid Protocol (Office of Origin)

14
International Application Filing Requirements
(contd)

• The previously filed application is referred to
  as the basic application
  
• Application will be transmitted by the Office of
  Origin directly to WIPO

15
International Application Filing Requirements
(contd)

• Priority of International Registrations
  Application will receive the same filing date as
  the filing date of the Basic Application if the
  following requirements are met
• The international application received within 2
  months of the filing date of the Basic
  Application
  
• The applicant for the international application
  is identical to the applicant for the basic
  application
  
• The goods and services for the international
  application are identical or narrower than the
  goods and services for the basic application

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International Application Filing Requirements
(contd)

• The applicant supplies a reproduction of the
  mark
  
• The applicant designates one or more Protocol
  Member countries or Intergovernmental
  Organizations (Contracting Parties) into which
  extension of protection of the mark is requested

17
Examination Procedure for International
Applications

• The International Bureau will examine the
  application to confirm the following formalities
  are met
  
• Applicant is entitled to file an international
  application
  
• A national of a Contracting Party
• Domiciled in a Contracting Party
• Real and effective commercial establishment in a
  Contracting Party
  

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Examination Procedure (contd)

• The good and services are properly classified
• Fees are paid
• Other formalities are met

19
Examination Procedure (contd)

• If any informality present International
  Bureau will issue an irregularity letter
  
• Corresponds to office action

20
Examination Procedure (contd)

• Applicant must respond and correct irregularity
  within time limits or application abandoned
  
• Fees forfeited
• If no irregularity Mark will be registered in
  the International Register
  

21
Requests for Extension of Protection

• Following registration of the mark by WIPO, the
  International Bureau will transmit a request for
  extension of protection of the mark to any
  countries designated by the international
  applicant
• The so called Designated Contracting Parties

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Time Limit for Refusal

• Protection will be extended to the designated
  country of interest unless
  
• Within 12 months or (in some cases 18 months) the
  designated country declares in a declaration of
  refusal that protection cannot be granted in that
  country
• If extension not refused within time limit, then
  protection will be extended by operation of law
  

23
Time Limit (contd)

• Refusal may be provisional based upon third
  party opposition
  
• It is not necessary that the opposition be
  completed within 18 months so long as Member
  country notifies International Bureau of the
  filing of the opposition within
• 18 months from date of the request for extension
  of protection
  
• and within 7 months from the date of the opening
  of the opposition period

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Dependency of the International Application

• Ceasing of Effect
• If the Basic Mark ceases to have effect totally
  or partially within 5 years from the date of its
  International Registration, the International
  Registration will likewise be limited to the same
  extent

25
Dependency of the International Application
(contd)

• Total cancellation of the Basic Mark results in
  total cancellation of the International
  Registration in ALL countries to which protection
  extended
• Partial cancellation (as for example, some but
  not all goods or services) results in
  corresponding partial cancellation in ALL
  countries to which protection extended
• Central Attack
• 5 year statute of limitations for central attack

26
Dependency of the International Application
(contd)

• after 5 years the International Registration no
  longer dependent upon the Basic Application
  
• Must be attacked in each country to which
  protection extended i.e. each Designated
  Contracting Party
  

27
Transformation

• Cancellation total or partial of an
  International Registration due to a central
  attack triggers the right of the registrant to
  transform its application in each country to
  which protection extended
• Rights preserved by transformation
• The transformation registration will maintain the
  same effective date as the date of the
  International Registration
  
• The filing date of the International Application

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Transformation (contd)

• Transformation application requirements
• Must be filed in each Designated Contracting
  Party by former holder of International
  Registration within 3 months of ceasing of effect
  (cancellation) of the International Registration
• The goods and services specified in the cancelled
  International Registration must cover those filed
  in the transformation application

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Transformation (contd)

• Not a means for expanding goods or services
• Must satisfy national filing requirements for the
  Designated Contracting Party in which the
  transformation application filed

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What is the Process of Filing an International
Registration (Originating from the United States)

• Rules for filing and processing of an
  international applications codified in new Part 7
  to Trademark Rules of Practice 7.11(a).
  
• Application must be filed electronically
• Using Trademark Electronic Application System of
  USPTO (TEAS)

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What is the Process (contd)

• Application must contain the filing date and
  serial number of the Basic Application or the
  registration date and registration number of the
  Basic Registration
• Application must provide the name and address of
  the international applicant that are identical to
  the name and address of the applicant or
  registrant as they appear in the Basic
  Application or Registration
• A drawing of the mark

32
What is the Process (contd)

• A description of the mark that is identical to
  the description of the mark in the basic
  application (if a description is provided in the
  Basic Application)
• An indication of the type of mark if the mark in
  the Basic Application is a three dimensional
  mark, a sound mark, a collective mark or a
  certification mark
• A list of the goods and/or services that is
  identical to or narrower than the list of goods
  and/or services in each claimed basic application

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What is the Process (contd)

• A list of the Contracting Parties designated for
  an extension of protection
  
• If the goods and/ or services in the
  International Application are not the same for
  all Contracting Parties, the application must
  include a list of the goods and/ or services that
  pertain to each designated Contracting Parties
• Services must be classified according to the Nice
  Agreement Concerning the International
  Classification of Goods and Services
  

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What is the Process (contd)

• The requisite fees
• Certification fee charged by the USPTO 7.6
• For certifying an international application based
  upon a single U.S. application or registration
  100 per class
  
• for certifying an international application based
  on multiple U.S. applications or registrations
  150 per class

35
What is the Process (contd)

• The requisite fees
• International Application fees for all classes
  and designated Contracting Parties identified in
  the international application 7.7
  
• Fee calculator http//www.wipo.int/madrid
• Fees may be paid directly to WIPO in Swiss Francs
  or
  
• Electronically through the USPTO in U.S. dollars
  
  

36
What is the Process (contd)

• A statement that the applicant is entitled to
  file an international application in the USPTO
  specifying basis for entitlement
  
• Applicant is a national of the United States
• Has a domicile in the United States
• Or has a real and effective industrial or
  commercial establishment in the United States

37
What is the Process (contd)

• In re International Barrier, 231 USPQ 310 (TTAB
  1986) (Mere incorporation does not create right
  to file)
  
• Ex Parte Blum 138 USPQ 316 (Commissioner of
  Patents 1963) ( Licensing not sufficient)
  
• In re Akteibolaget Electrolux, 182 USPQ 255 (TTAB
  1974) (Registrations owned by subsidiary does not
  mean out of country parent can file)

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What is the Process (contd)

• An email address for receipt of correspondence
  from the USPTO

39
What is the Process (contd)

• Where an International Application meets all the
  filing requirements, the USPTO will certify to
  the International Bureau that the information in
  the international application corresponds to the
  information contained in the basic application
  and will forward the international application to
  the International Bureau
• Certification by the USPTO (as Office of Origin)
  is a prerequisite to examination of the
  application by WIPO

40
What is the Process (contd)

• An international application must be presented to
  WIPO by the Office of Origin
  
• USPTO Electronic Application Form
• When an international application is based on one
  U.S. application the international electronic
  form will pre-populate the application form
  with the information from the U.S. form that must
  be certified

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What is the Process (contd)

• Priority Claims
• Usually, priority based upon U.S. Basic
  Application
  
• But International Application may contain Paris
  Convention priority claim
  
• Based upon first filed application in another
  Paris Convention country
  

42
What is the Process (contd)

• For claim of priority to survive, USPTO must
  transmit international application to
  International Bureau
  
• Within 2 months of receipt of the request for
  International Application
  
• Within 6 months of filing of earlier application
  upon which Paris Convention priority based

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Irregularities - 7.14 (b)

• If the informality concerns classification or the
  identification of goods or services, the
  International Bureau will notify USPTO and
  applicant at the same time
• The international applicant must respond to the
  ID or classification irregularity through the
  USPTO using the TEAS system

44
Irregularities (contd)

• For all other irregularities, the response must
  be made directly to the International Bureau
  
• Response must be made within time limits
  prescribed by International Bureau or application
  goes abandoned
  
• Filing fees forfeited

45
Requests for Extension of Protection of
International Registration to United States 66
of the Lanham Act, 15 U.S.C. 1141(f)

• Requirements
• The request must be transmitted by International
  Bureau to USPTO
  
• When received by the International Bureau, the
  request have attached a declaration of bona fide
  intention to use the mark in the United States
  
• Verified by applicant

46
Requests for Extension (contd)

• Requests for Extension to Protection is an
  application with a 66 basis
  
• 66 basis applications examined like any other
  trademark application in the United States
  
• Refusals on all same grounds that apply to
  domestically originated applications
  

47
Requests for Extension (contd)

• Request for Extension applications may contain a
  claim of priority
  
• Usually filing date of Basic Application in the
  Office of Origin
  
• Requests for Extension of Protection may only be
  registered on the Principal Register
  
• Supplemental registration not available for
  International Applications

48
Post-Registration Matters

• Renewal of International Registrations
• All requests to renew an international
  registration must be made at WIPO
  
• Renewal requirements
• Request
• Payment of fee
• No proof of use to renew International
  Registration

49
Post-Registration Matters (contd)

• Proof of use is required to maintain Extensions
  of Protection to United States
  
• Affidavits of use required under 71 of the
  Lanham Act
  
• Between 5th and 6th year, 9th and 10th year and
  19th and 20th year and thereafter every ten
  years
  
• Time periods run from the registration date in
  the United States of the request for extension of
  protection not from the international
  registration date at WIPO

50
Post-Registration Matters (contd)

• The holder may process a number of changes to its
  international registration through WIPO
  
• Changing name or address of holder or its
  representative
  
• Changing ownership of the IR with regard to some
  or all of the goods and services specified and
  some or all of the Designated Contracting
  Parties
• narrowing goods and services for some or all the
  Designated Contracting Parties

51
Post-Registration Matters (contd)

• The holder may process a number of changes to its
  international registration through WIPO
  
• Renouncing all goods and services for some
  Designated Contracting Parties
  
• Canceling some or all goods and services in IR,
  and thus for all the Designated Contracting
  Parties

52
Post-Registration Matters (contd)

• Limitation on Assignments
• International Registration may be assigned only
  to a person with the necessary link to a
  Contracting Party
  
• A national of a Contracting Party
• Domiciled in a Contracting Party
• Real and effective commercial establishment in a
  Contracting Party

53
Post-Registration Matters (contd)

• Recording a Security Interest Restricting
  holders right of disposal of the IR
  
• Party recording a security interest must be a
  national of, domiciled in or have a real and
  effective commercial or industrial presence in a
  Contracting Parties

54
Replacement of National Registrations

• Holder of an International Registration may
  replace its prior national registrations with its
  International Registration to centralize the
  management of its trademark portfolio
• Effect
• The replacing IR has the same rights as the
  replaced national registration by operation of
  law

55
Replacement of National Registrations (contd)

• The replaced national registration remains in
  effect until it expires or is cancelled
  
• May maintain replaced national registration if
  owner so elects (in United States)

56
Replacement of National Registrations (contd)

• Requirements for replacing prior national
  registration
  
• National registration must be in the name of the
  holder of the international registration
  
• Marks must be identical
• The goods and services specified in the IR must
  cover those specified in the national
  registration
  
• Procedure for replacing U.S registration with IR
  stated in 7.28 of the Trademark Rules of
  Practice