T.J. Romano tromano@khpatent.com Kolisch Hartwell, P.C. Portland, OR International Trademark Protection Using the Madrid Protocol: Worth the Convenience? T.J. Romano tromano@khpatent.com Kolisch Hartwell, P.C. Portland, OR

Agenda Options for Foreign Trademark (and Service Mark) Registration Focus on Madrid System How does the Madrid Protocol work? What are the Pros and Cons? Examples Strategy Considerations Useful Resources & Glossary

International Filing Options Direct Priority Direct Madrid System File U.S. Application w/ USPTO Directly File in Each Desired Country* Directly File in Each Desired Country w/ Priority Claim File International App w/ USPTO WIPO IB Reviews & Registers Each Country Examines & Grants Protection Each Country Examines & Grants Protection Each Designated Country Examines & Grants Maintenance & Admin with Each Individual Country Maintenance & Admin with Each Individual Country All Non-U.S. Maintenance & Admin with WIPO *The term ”Country” throughout includes mechanisms, such as the European Community Trademark (CTM), that confer rights to multiple countries (e.g., a CTM registration covers European Union countries).

What is the Madrid System? Governed by Madrid Agreement and Madrid Protocol. International Bureau (IB) of World Intellectual Property Organization (WIPO) administers. 83 countries parties to the Madrid Protocol. U.S. a party only to the Madrid Protocol as of Nov. 2, 2003. Only Madrid Protocol governs U.S. applications. Goal: “Provides a cost-effective and efficient way for trademark holders … to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.” - USPTO Website Madrid System is a filing and formalities system and does NOT confer substantive rights. Substantive rights come directly from each designated country.

Members of the Madrid Protocol

Notable Exceptions Canada & Mexico India Central & South America

Prerequisites for Using the Madrid Protocol Active, basic application/registration required, cannot start with an international application. Basic app./reg. must be from forum where applicant qualifies as: having a “real and effective industrial or commercial establishment,” having a “domicile,” or being a “national.” All applicants must each individually qualify in that forum. U.S. applicant basic app. usually with USPTO

When to File Under Madrid Protocol Can file an international app. based on an active, basic app./reg. at: anytime, but within 6 months of filing date of basic app./reg., get priority claim. After six months, then no priority claim. Can file subsequent designation(s) at: anytime within 5-year anniversary date of international reg. if basic app./reg. is active. If within 6 months of priority date, get priority claim. After six months, no priority claim. anytime after 5-year anniversary date for active international reg. International reg. date is filing date in each subsequently designated country.

Procedure: Formalities Examination U.S. Application Filed or Registration Complete International priority date is filing date of U.S. basic app. if international app. received at USPTO within 6 months of U.S. basic app. filing date. Otherwise, it’s date of the international registration, which is usually the date the USPTO receives the international app. (but see TMEP § 1902.04 about defects that impact international registration date) Must File International Application with USPTO, not WIPO Use TEAS or paper form. Designate at least one country. - Pay USPTO certification fee ($100/class), IB basic fee (starts at $675), and designated country fees (varies).

Procedure: Formalities Examination Identical applicant and mark. List of Goods & Services no broader than in the U.S. basic application / registration. Certain indications match (mark description, three-dimensional, sound mark, color, etc.). See TMEP § 1902.02 for all formalities reviewed. USPTO Reviews Application Formalities USPTO Forwards the Application to the International Bureau (IB) - Basic formalities met.

Procedure: Formalities Examination Reviews description and classification of goods/services. Notice of Irregularity may be sent to USPTO and/or TM Holder at this stage. Time limits for responding. Forms on TEAS. See TMEP §§ 1902.05-.07. IB Reviews to Ensure Madrid Protocol Filing Req’ts are Met IB Registers & Publishes the Mark in WIPO Gazette If formalities met, then Registration Certificate sent to TM Holder. Designated Countries notified separately.

Basic Formalities Checklist For U.S. applicant, file international app. with USPTO in English. Include basic registration date/number, or application filing date/number, as appropriate. File within 6 months of basic app. for priority claim. Same applicant and mark as in basic app./reg. List of goods and services no broader than in basic app./reg. Designate Madrid Protocol countries for extending protection. Pay fees. Review TMEP § 1902 for all formalities.

Procedure: Substantive Examination Refusal must be communicated to IB within 18 months (can be longer with opposition period). IB Notifies TM Holder. Refusal Each Country Examines as if Submitted Locally Protection Granted Country informs IB protection granted. No refusal within 18 months, so IB extends protection automatically. Provisional refusal is enough to satisfy the 18 mo deadline Standard deadline is one year, but a country can opt for 18 mos

Maintenance 10 year duration based on date of international registration, renewable for additional 10 year periods (6-mo reminder sent). Fee paid to International Bureau. Can renew electronically on WIPO website. Name, ownership, address changes, license agreements, encumbrances, also done centrally for all designated countries. Provisional refusal is enough to satisfy the 18 mo deadline Standard deadline is one year, but a country can opt for 18 mos

Central Attack & Transformation Within the first 5 years, any failure of the basic application or registration will result in corresponding cancellation of the international registration. If this happens, have 3 months to apply directly with each designated country and still get the original application date, and priority date, if any. But pay more fees and retain foreign agent(s) to file.

Benefits of Madrid Protocol File international app. anytime if basic app./reg. is active. File one application, in English, and pay one fee for all designated countries. Foreign agent(s) not needed for filing, reducing costs. Increasingly cost effective as more countries designated. Basic registration can be Supplemental Registration. 18-month refusal deadline, then automatic protection. International registration becomes independent of basic registration after 5 years.

Benefits of Madrid Protocol (cont.) Simplified subsequent management: One international registration, with one number and one renewal date. One place to file renewals, changes of address, assignments, etc. for all designated countries Can designate countries anytime during life of active, international registration. Rights under international registration can be assigned separately (e.g., holder maintain rights in good A, but assign rights in good B, etc.)

Drawbacks of Madrid Protocol International “registration” does not confer substantive rights. Not all countries parties to Madrid Protocol. Applicant cannot modify international application after filing: No modification to recorded mark, even if mark modified in basic application. Can’t expand or extend list of goods/services after submitted, even to include ones omitted that are in basic app./reg. Goods/services may be narrow in scope: U.S. registrations contain high level of specificity and based on use, each limit scope. Goods/services in international registration, and thus in designated counties, restricted to same scope as in basic registration.

Drawbacks of Madrid Protocol (cont.) USPTO must transmit international application to IB within 2 months of receipt. Otherwise, date of international registration is when IB receives, not when USPTO received. “Central Attack” 5-yr dependency (but 3-month transformation). Substantive Examination in Each Designated Country: May need local agent anyway if protection refused. Designated country can send refusal in English, Spanish, or French. Subsequent Designation: no prorated fees and scope of goods/services always limited to international registration. Assignee must qualify as a person, domicile, or effective business in a Madrid Protocol country to maintain international registration.

Example 1: Scope of Rights Facts: Client wants to register the mark WIDGET in Europe for shoes and cars. Client filed U.S. application for shoes and cars. U.S. registration issues only for shoes. European application filed within priority deadline using: European application filed after priority deadline using: Direct Priority Option Madrid Protocol maintain priority for shoes and cars limited to shoes Direct Option Madrid Protocol no priority, but can file for shoes and cars no priority and limited to shoes

Example 2: Cost Comparison Client wants to obtain registrations in the following countries in one class, with a priority claim to U.S. application: Systems Available

Option 1: Direct Priority (CTM + National) $2500(CTM) + $2000(JP) + $1000(KR) + $600(CN) + $1500(NO) + $1000(AU) + $1000(NZ) + $1200(CA) + $1200(MX) Estimated Cost = $12,000* * Estimated Cost only includes out-of-pocket expenses (i.e., government and agency fees, foreign agent fees).

Option 2: Combination (Madrid + Direct Priority) $3550(Madrid) + $1000(NZ) + $1200(CA) + $ 1200(MX) Estimated Cost = $6,950* * Estimated Cost only includes out-of-pocket expenses (i.e., government and agency fees, foreign agent fees).

Option 3: Combination (Madrid + CTM + Direct) $2500(CTM) + $2184(Madrid) + $1000(NZ) + $1200(CA) + $1200(MX) Estimated Cost = $8,084* * Estimated Cost only includes out-of-pocket expenses (i.e., government and agency fees, foreign agent fees).

Strategy Considerations No one-size strategy: each filing option has pros and cons. Weigh cost & efficiency against importance of broad protection in each individual country. Consider ways to avoid restricted goods/services worldwide. Multi-nationals file outside United States with broad description and U.S. application through Madrid Protocol. But consider risks (e.g., tax implications, etc.). Consider using a combination of available filing options depending on where the client wants protection and which foreign markets are most critical.

Useful Resources WIPO at www.wipo.int/madrid/en Madrid fee calculator (in Swiss francs, no USPTO fees). Review “Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol.” Searchable online databases: ROMARIN at www.wipo.int/romarin Madrid Express at www.wipo.int/ipdl/en/madrid USPTO at www.uspto.gov/trademarks/law/madrid/index.jsp Online filing system for international applications. Review Trademark Manual of Examining Procedure (TMEP), Chapter 1900 “Madrid Protocol.”

Basic Glossary of Madrid Protocol Terminology basic application: original application filed in a qualified home forum office of applicant (e.g., USPTO for U.S. applicant) basic registration: home forum registration that issues from basic registration (e.g., USPTO registration). international application: filed through Madrid Protocol, and is based on an active, basic application or registration. international registration: issues from the international application. designated country: any country that is a party to Madrid Protocol for which an applicant requests an extension of protection under the Madrid Protocol. subsequent designation: request by holder of an international registration for an extension of protection to additional Madrid Protocol countries after international registration issues.

520 S.W. Yamhill Street, Suite 200 Contact Information T.J. Romano tromano@khpatent.com Kolisch Hartwell P.C. 520 S.W. Yamhill Street, Suite 200 Portland, Oregon 97204 (503) 224-6655