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

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:

A Sampling of Individual Fees Belarus: /class beyond 3 classes China: /class beyond 1 class Cuba: 2-part filing fee , + 91/class past 3 EU: 1, /class beyond 3 UK: /class beyond 1 India: /class beyond 1 Japan: 2-part fee , + 75/class beyond 1 Oman: /class beyond 1 San Marino: /class beyond 3

Fees in the Stans Tajikistan: /class beyond 1 Turkmenistan: /class beyond 1 Uzbekistan: 1, /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 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 Thanks to Garfield Goodrum

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