Can You Protect Your US Trademark Internationally? (Part 1)

Part 1: The Paris Convention & Madrid System

 

Filing for trademark protection is the best way to ensure you have the exclusive right to use your mark and to sue for damages if someone else uses it without your permission. Registering your mark with the US Patent and Trademark Office (PTO) protects your unique brand within the United States. But what if you do business overseas or in Canada and Mexico? Each country has its own protocol for registering and approving trademarks. Depending on where you will be doing business, you have a number of options to register your mark internationally.

 

The Paris Convention Allows & Protects International Trademark Registration

In 1883, the Paris Convention for the Protection of Industrial Property established a Union of countries that agreed to regulate international intellectual property rights. There are currently 174 members in the Union, including most leading world trade powers. The Union protects the basic rights of foreign applicants to file requests for patent or trademark registrations in another of its member countries and receive the same treatment as if it the application came from a citizen of that country. If the country grants the application, the foreign owner has the same IP protection and legal remedies against infringement that someone from that country would have.

The Paris Convention isn’t a procedure for trademark registration; it’s a treaty that ensures that out-of-country applicants are treated the same as in-country applicants. It also grants what is called “Convention Priority” to applicants: If an application is filed in one Union country, the applicant gets priority when applying for protection in any of the other countries in the Union within six months of that filing. This means that the subsequent applications are regarded as if they had been filed on the same day as the first application; that is, they would have priority in time over any applications filed by others during that six-month period for the same mark. Membership in the Union is governed by the World Intellectual Property Organization (WIPO), based in Geneva, Switzerland, which also arbitrates any disputes that arise between members related to rights or priorities.

 

The Process of Registering and Protecting Your Trademark Internationally

If you are planning on selling your products or doing business in just one other country—for example, Canada—you may fill out an application for trademark protection directly with the appropriate government agency. In Canada, that’s the Canadian Intellectual Property Office, which offers a user-friendly trademark database and online application process.  However, many other countries don’t have such an up-to-date, computerized system.  Applications and searches can involve digging through paper archives, making it necessary to have local “boots on the ground.” Moreover, if you’re planning on doing business in a number of different countries, conducting searches, doing due diligence, filling out multiple applications, and paying multiple application and registration fees can get labor-intensive, time consuming, and very expensive.

To help reduce some of this inconvenience and expense, one solution now available to United States registrants is the Madrid System.

 

The Madrid System for International Registration

The Madrid System for the International Registration of Marks is the primary international system for facilitating the registration of trademarks in jurisdictions around the world. It is a “facilitation” system rather than a “registration” system; that is, it allows you to complete one application and pay one fee, which serves as your application in as many participating countries as you select, but does not actually grant any stand-alone trademark protection. Like the Paris Convention, it is overseen by the WIPO.

The Madrid System began in 1891 with a multilateral treaty called the Madrid Agreement Concerning the International Registration of Marks (“the Madrid Agreement”), which was subsequently modified and amended more than a half dozen times. The Madrid Agreement was supplemented and changed in part by the Protocol Relating to the Madrid Agreement (“the Madrid Protocol”), entered in 1989 and amended in 2006 and 2007. Together, these documents are known as the “Madrid Union.” The “Contracting Parties” consist of 113 participating countries that are collectively responsible for more than 80% of global trade. Some countries are subject only to the requirements of the Madrid Agreement, with others are subject to just the Madrid Protocol, and still others are governed by the Madrid Union (i.e. both agreements). Of note is the fact that some significant global powers are not participants to either the Madrid Agreement or the Madrid Protocol, including Brazil, Canada, Thailand, and much of the Middle East. The United States became a Contracting Party surprisingly late; only in 2003, subscribing to only the Madrid Protocol.

 

  • Filing for Protection for a US Mark Under the Madrid Protocol

The basic process for filing for international trademark protection under the Madrid Protocol, to which the US is a Contracting Party, begins with an application for International Registration (IR).[1] The application is submitted to a single office (the International Bureau of the WIPO) in one language, with one set of fees in one currency (rather than having to pay separate application and filing fees in each desired jurisdiction). No local agent is needed. The application must meet the Protocol filing requirements (which are not the same as the requirements to obtain a trademark from the USPTO) and designate in which of the international Contracting Parties the applicant wishes to register the mark.

If the International Bureau approves the application and registers the mark, it will notify each country designated in the application, requesting that the country extend protection to the mark. Each country’s trademark agency will then examine the request for an extension of protection as if it were a direct application for trademark protection under its national laws. Any country is free to deny the application if it fails to meet the local criteria for registration protection; however, it must notify the International Bureau within certain time limits (set forth in Article 5(2) of the Madrid Protocol). If it does not oppose the application within the time limits, or specifically approves it, the holder of the international registration is granted local registration and protection within that country’s jurisdiction.

The Madrid Protocol simplifies the enforcement and management of a mark across multiple jurisdictions, allowing a holder of an international registration to renew the registration, update its contact information, and record any ownership changes solely with the International Bureau rather than in each country separately.

 

  • Drawbacks of the Madrid Protocol

Although filing a mark for international registration under the Madrid Protocol has numerous benefits, there are some drawbacks and risks that an applicant should consider. As mentioned earlier, the requirements to approve an IR application are not the same as to obtain a US trademark from the USPTO. One notable difference is that to obtain USPTO approval, an applicant must show evidence of use of the mark in commerce; this is not a requirement for IR approval. As a result, if your trademark is protected by the Madrid Protocol rather than the USPTO, you may face a higher burden during any litigation to defend your trademark.  At the same time, however, the Madrid Protocol allows you to register a mark long before it’s actually in use in commerce in the member country, unlike in the United States where use in commerce should generally be shown within a year of filing the application.

Another significant issue with the IR process is its inflexibility.  After an application has been submitted to the WIPO for an IR, virtually nothing can be changed. The mark cannot be altered, even in ways that the USPTO would deem “insignificant” and therefore acceptable, such as adding a space between letters.  An applicant also cannot add a class to an existing application in order to re-classify goods, as in the United States. There is no choice of filing basis to enhance protection of the mark by specifying an earlier priority date under the Paris Convention priority protections.

It’s also very easy to miss deadlines under the Madrid Protocol registration renewal process. Although a holder of an international registration only has to communicate with and pay one registration fee to one central office, rather than renewing the protection in each applicable country and paying each separately, the process is more complicated than US trademark renewals. Two separate filings, on two different systems, on two different dates, must be made to renew an IR under the Madrid System. If you hold multiple trademarks under the IR system, it can be difficult to keep your registrations organized, current, and up to date.

 

Other International Multilateral Registration Systems

Finally, the Madrid System isn’t the only mechanism in place to streamline international registration of trademarks. Some other major worldwide systems are:

  • The European Union Trade Mark registration, applicable to all member states of the European Union
  • ARIPO (African Regional Intellectual Property Organization), which covers several English-speaking African nations
  • OAPI (African Intellectual Property Organization), which covers several French-speaking African nations

These registration systems will be covered in more detail in an upcoming blog post, Can You Protect Your US Trademark Internationally? Part 2.

 

If you’re thinking about expanding your business globally and considering international trademark protection, it’s wise to consult with an attorney who is experienced in international intellectual property law and filing procedures to determine the course of action that is best for your business.

 

The content of this legal blog is for educational purposes only in order to provide general information and a general understanding of the law. This blog does not provide legal advice and no attorney-client relationship is created between you and Bristow-Ford Law or Susan Bristow-Ford as a result of this blog.  No information herein should be used as a substitute for competent legal advice from a licensed attorney in your state or jurisdiction and your use of this information is at your own risk. The information herein may not reflect the most current legal developments and may be changed, improved, or updated without notice. Neither Bristow-Ford Law nor Susan Bristow-Ford is responsible for any errors or omissions in the content of this blog or for damages arising from the use of information contained in this blog under any circumstances.

 

Written with the assistance of attorney Jamie Pfeiffer.


[1]Madrid Protocol.” United States Patent and Trademark Office, 4 Apr 2016. Web. 14 Sep 2016.

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