Trademark Protection Under
the Madrid Protocol:
Strategic Considerations
Presented by John Scruton
Advantages of the Madrid
Protocol
• Ease of Application
• May Reduce Costs
• Centralized Maintenance
Disadvantages of the Madrid
Protocol
• IR is tied to the Basic Application
– Limits on description
– Subject to “central attack”
• May be more expensive
Advantage: Ease of
Application
• Single filing with US Patent and Trademark
Office
• Filing in one language
– English works
• Potential to extend protection to 91
countries
Ease of Application
• Efficiently secure priority in a large number of
countries
– Importance of priority
• Efficiently obtain protection in a large number of
countries
– Registration more important abroad
Ease of Use
• Not necessary to engage local counsel
– But sometimes a good idea anyway
• Searching
• Prosecution
• Centralized location for
– Renewals
– Address and name changes
– Recording assignments and licenses
Advantage: Flexibility
• Ability to later designate additional
countries for protection
• Ability to assign rights for individual
countries
– Compare CTM – all or nothing
Disadvantage: Limitations
• Limited to Basic Application/Registration
• Mark must be the same
– No separate marks for different markets
• Description of goods and services may not
exceed the basic application/registration
– U.S. system is more restrictive than abroad
A Foreign Registration
A Foreign Registration, cont’d
A Foreign Registration, cont’d
Disadvantages: Central Attack
• IR is tied to the success of the Basic
Application/Registration
– Basic application may never become registered for a
U.S.-specific reason
– Basic registration may be cancelled for a U.S.-specific
reason
• Likelihood of confusion with mark used only in U.S.
• Other technical reasons, e.g. disparagement (is
REDSKINS considered disparaging abroad?)
Limitations on Disadvantages
• IR stands on its own after 5 years
• Failed IR may be converted to
National Applications and retain IR’s
priority
–Additional unplanned expense
Disadvantages
• No ability to amend the mark
• New countries added after
registration are on the IR’s timeline
–Does not enjoy a full 10-year term
Strategic Considerations
• Goal: Broadest Possible Rights
• U.S. companies may want to consider
alternatives
– Applications not limited to U.S. description of goods
allow broader protection
– Potentially use another country for basic application
• National of, domiciled in, or “real and effective
industrial or commercial establishment” in another
Madrid country?
Goal: Limit Costs
• Madrid advantages:
–Simplified initial application
–Simplified renewals and
maintenance
• Searching and prosecution costs
similar to national applications
Madrid Filing Costs
• Fees vary widely between member countries
• Structure of fee (all fees are in Swiss francs):
– Basic filing fee: 653
– Basic supplementary fee for classes beyond 3: 100
– Basic complementary fee for each designated country:
100
– Madrid Protocol countries may have individual fees
that vary country to country
• Fee calculator at:
www.wipo.int/madrid/en/fees/calculator.jsp
A Sampling of Individual Fees
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Belarus: 600 + 50/class beyond 3 classes
China: 249 + 125/class beyond 1 class
Cuba: 2-part filing fee 274 + 82, + 91/class past 3
EU: 1,111 + 192/class beyond 3
UK: 262 + 73/class beyond 1
India: 51 + 51/class beyond 1
Japan: 2-part fee 99 + 328, + 75/class beyond 1
Oman: 484 + 484/class beyond 1
San Marino: 178 + 47/class beyond 3
Fees in the Stans
• Tajikistan: 420 + 16/class beyond 1
• Turkmenistan: 178 + 90/class beyond 1
• Uzbekistan: 1,028 + 103/class beyond 1
Goal: Broadest Geographic Coverage
• Madrid is good but may require
supplementation
• 91 countries under the Madrid Protocol
– Albania to Zambia
Madrid Map
Non-Signatories
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Argentina
Brazil
Canada
Indonesia
Malaysia
Pakistan
South Africa
Many others in South America and Africa
Goal: Maximum Protection Against
Third Party Claims to the Mark
• Madrid allows quick and efficient filing in much
of the world
• Priority as of ITU filing date
Goal: Flexibility
• Madrid does not allow changes to the mark
– U.S. allows minimal changes that do not alter the
commercial impression
• No different marks in different countries
• Madrid limits assignment to those in Madrid
countries
• Madrid allows assignments of rights in less than
all countries
– CTM is a unitary system: no piecemeal assignment
Licensing
• Some may require recording of licenses
– Madrid allows central recording
• Recording of “registered users” in some so that
use by licensee inures to licensor
• Government approval of licensees may be
required
Office of Origin
• Flexibility where applicant has operations in
multiple Madrid countries
• Consider for breadth of description
• Consider for strength of application or existing
registration
– Avoiding central attack
Madrid and CTM
• Failed CTM application may be converted to
national applications
• Failed Madrid application designating EC may be
converted to CTM
– Opportunity to address issues that led to refusal by
limiting CTM application
– If converted CTM application fails, may still convert to
national applications
• Cost: CTM basic fee €900 + €150 per class > 3
Other Issues
• Registrability may vary in member
countries
– Distinctiveness may be harder to show
– National examination
• Use may be required
– Required for registration in U.S.
– Non-use may be grounds for
cancellation in other countries
John Scruton
Stites & Harbison PLLC
502-681-0320
[email protected]
www.stites.com
Thanks to Garfield Goodrum
Georgia
Tennessee
• Atlanta
• Blue Ridge
• Franklin
• Nashville
• Memphis
Indiana
Virginia
• Jeffersonville
• Alexandria
Kentucky
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Covington
Frankfort
Lexington
Louisville