Articles

Madrid Protocol on Trademarks Expands, But Falls Short of Universal Acceptance

Kristi Adair-Zenter
(kzentner@mansfieldtanick.com)
Mansfield, Tanick & Cohen, P.A.
1700 U. S. Bank Plaza South
Minneapolis, MN 55402
Tel: 612.339.4295
FAX: 612.339.3161

and
Adriana Barrera
Berninzon, Loret de Mola Benavides
Lima, Peru

As of November 2, 2003, for the first time, trademark owners in the United States can take advantage of a streamlined international trademark registration system known as the Madrid Protocol. The so-called "Madrid system" of international trademark registration is actually governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol Relating to the Madrid Agreement, which became effective December 1, 1995. The United States is party only to the Protocol, not the Agreement. The Protocol offers no substantive rights itself but essentially operates as a pipeline for establishing trademark rights in the participating individual member countries. Participation by the United States in this international filing system now enables owners of U.S. trademarks to extend their trademark rights and protections through a number of foreign jurisdictions by means of a single English language application filed with the United States Patent and Trademark Office ("USPTO").

How does the Madrid Protocol Work?

The Madrid system is administered by the International Bureau of the World Intellectual Property Organization ("IB"). To apply for an international registration under the Protocol, an applicant must be a national of, be domiciled in, or have a real and effective business or commercial establishment in one of the countries or intergovernmental organizations that are members of the Protocol. The application must be based on a trademark application filed in, or registration issued by, the trademark office of one of the member countries. The international application must be for the same mark as the domestic application and include a list of goods or services that is identical to or narrower than the list of goods or services in the domestic application or registration. The international application must designate one or more member countries in which an extension of protection of the international registration is sought. A single filing fee, payable in U.S. currency, is calculated based on the number of classes and countries covered by the application.

The applicant must submit the international application through the trademark office of the member country in which the domestic application or registration is held ("Office of Origin"). The Office of Origin must certify that the information in the international application corresponds with the information in the domestic application or registration. The holder of an international registration may request protection in additional member countries by submitting a subsequent designation. A subsequent designation is a request by the holder of an international registration for an extension of protection of the registration to additional member countries.

What are the benefits of the Madrid Protocol?

The Madrid Protocol provides a simple and economic means for obtaining and maintaining trademark protection throughout its member countries. This procedure comes at a greatly reduced price for prosecuting foreign trademark registrations, as compared with filing separate applications in multiple countries. And, in countries where the time typically required to examine an application is relatively drawn out, the Protocol can result in applications being examined and registered much sooner. Foreign counsel will generally not be needed unless the application is refused or opposed. Additional benefits include a single renewal date in all countries of registration and reduced renewal fees.

The implementation of the Madrid Protocol will impact all U.S. trademark owners, even those who never file outside the United States. Purely American businesses should be increasingly vigilant for uses of their marks by foreign companies in the U.S. and on the Internet to avoid infringement issues, including dilution of their marks, which could adversely affect their ability to obtain trademark protection even in their home country.

The Peruvian and Andean Community Perspective

Despite the U.S.'s recent entry into the Madrid system, many countries in Latin American, including Peru and the other countries of the Andean Community of Nations (Bolivia, Colombia, Ecuador, and Venezuela) are not members of the Madrid Protocol or of the Madrid Agreement Concerning the International Registrations of Marks. Most of these countries are still analyzing the advantages and disadvantages of joining the Madrid Protocol. Until last year, Peru and other Spanish speaking countries felt that the Protocol was unconstitutional in their own jurisdictions, because Spanish was not considered one of the official languages in the Protocol. Now, however, because the Protocol considers as official languages English, French and Spanish that problem, at least, has been solved.

Other obstacles related to Peruvian ratification of the Protocol remain, however, including concern regarding the Peruvian Trademark Office (PTO). The PTO stands to lose a significant amount of its income as the majority of the fees paid by foreign applicants under Madrid Protocol would be allocated for the WIPO, which could create budgetary problems for the PTO. Also, at this point, the PTO probably does not have the technical tools or capacity to implement the Protocol and as there is no sufficient budget it will be difficult to afford them. Finally, most Peruvian trademark officers are not bilingual which could be a challenge to implementation. (A related political obstacle, which has been raised by several trademark associations and trademark agents in Latin America, is that, because under the Protocol the cost of filing of trademark applications would be reduced, income for trademark agents would also likely be reduced.)

Peru's Trademark Office is relatively efficient in handling trademark registration prosecutions and it is generally possible to obtain a trademark registration in 3 or 4 months. So, even if the Protocol is adopted by Peru, it may be more efficient for trademark owners to file a trademark application directly before the PTO, rather than filing it according to the Protocol. In the end, for both US and non-US trademark owners, and their counsel, the Madrid Protocol provides an additional tool which can be used to protect their trademark rights worldwide, but nothing in the treaty compels any citizen or resident of its member countries to follow its procedures, they simply have more options than before.

Kristi Adair Zenter is an attorney at Mansfield Tanick & Cohen, P.A. in Minneapolis. Adriana Barrera is an attorney at Berninzon, Loret de Mola & Benavides in Lima, Peru. Both practice in the area of trademark law.