Interview on Madrid Protocol Multinational Trademark Registration with Attorneys Mary Shapiro and Mark Steiner

An interview on multinational trademark registration with Mary L. Shapiro, Esq. and Mark A. Steiner, Esq. of Townsend and Townsend and Crew, L.L.P.

FindLaw: Can you give readers a brief overview of the Madrid Protocol for Multi-National Trademark Registration?

Mark: The Madrid Protocol is a treaty that has been in existence for a number of years. It provides a methodology for filing trademark applications and registering marks in approximately 60 member countries around the world. The Protocol will go into effect for U.S. applicants on November 2, 2003. It allows for a single application through the World Intellectual Property Organization (WIPO), based in Geneva, Switzerland. The applicant designates the countries in which it desires to file applications. The applicant may designate one country, all 60 countries, or anything in between. With the payment of required fees, the applications are then forwarded by WIPO to each country, and the trademark office in each of those countries examines the application to decide whether it will allow registration of the mark there.

Mary: In addition to the Protocol being a filing mechanism, it is also a maintenance mechanism. Once registration is accomplished, there is a consolidated mechanism for renewal at a 10-year period. One fee is paid to WIPO and registration is renewed. Other coordinated maintenance benefits include a procedure for name change of an applicant, or for an assignment from one party to another.

FindLaw: What kind of effect do you see the Protocol as having on U.S. companies that own trademarks, in terms of registering for and protecting those trademarks overseas?

Mark: It might attract more international trademark filings than we have presently, because at least at the very front end of the process the costs will be lower. But at the end of the day it is unclear whether the costs will be any less. Costs may be higher in some instances.

Mary: That is because when you file an application internationally right now, you typically seek the assistance of local counsel to assist in prosecuting the application, because trademark laws obviously vary country to country. Initially under the Madrid Protocol, you do not need to designate a local associate. So if the application proceeds through the local trademark office without any issues arising, it could end up being less expensive for companies filing under the Protocol. But in many jurisdictions it is not uncommon for some issue to arise about the application, such as in the description of the goods and services associated with the mark. So, in many cases you will still require the assistance of local counsel, just at a later stage.

FindLaw: How do renewal procedures and timelines under the Protocol differ from those under the U.S. Patent and Trademark Office?

Mark: One of the benefits of the Protocol is that the registrations in all the member countries come up for renewal at the same time (10 years after initial registration) and you can renew through WIPO. However, that does not affect a U.S. applicant's registration in the U.S. We have a 10-year registration period in the U.S., and that track will not be simultaneous with the WIPO track.

Mary: Also, the U.S. requires a declaration of use between the 5th and 6th year after registration, and that will not change for U.S. registrants. Other individual member countries may also have their own requirements, so there can be a number of member-specific requirements that need to be given consideration.

FindLaw: What effect will the Protocol have on legal actions arising from trademark violations, in terms of jurisdiction and enforcement issues?

Mary: What you have under the Protocol is, in effect, a number of applications being examined under the local law of the member countries. Compare that to filing an application in the European Community, where you get one administrative body to examine the application at one point in time for all EU countries. Under the Madrid Protocol, the application is channeled to each of the member countries' trademark offices for review, consistent with their trademark laws. Similarly, enforcement is not under a single body of law, but is through each of the member countries. If you run into a problem in ten countries, you could potentially have ten sets of laws to deal with. Again, contrast that with the European community, which does have a single body of law and a court system where you can address enforcement issues.

FindLaw: Are there any special considerations that U.S. companies need to keep in mind under the Protocol?

Mark: Whether to take advantage of the Madrid Protocol filing is a fairly complex decision. There are some drawbacks. One example is that the applicant is only entitled to the breadth of registration that it would enjoy in its own country. So, if a U.S. applicant files under the Protocol, it must describe the relevant goods and/or services with the specificity required by the U.S. Patent and Trademark Office. Using computer software as an example, you cannot simply describe "computer software", but must specify functionality of the software and the field of use. Contrast that with other countries where you could file for "computer software" and obtain a registration for all goods in that particular international classification of goods or "computer software" without having to limit the coverage to functionality and field of use. If you are working with the rules of the U.S. Patent and Trademark Office, the breadth of protection you get is actually quite narrow.

Mary: There is also limited assignability of a Madrid Protocol registration, because it can only be transferred or assigned to a company that is residing in a member country. While there are a large number of participating countries, a number of notable exceptions include Canada and Mexico. That creates a potential challenge, especially for companies that anticipate participating in mergers and acquisitions.

FindLaw: Does the Madrid Protocol present any unique considerations for companies seeking help from IP firms such as Townsend?

Mark: Any applicant needs to use experienced and knowledgeable intellectual property counsel to decide whether and how to utilize the Madrid Protocol. You may want to use it for all, some, or none of countries under consideration, depending on the circumstances. What are the goods and services you are trying to cover? How strong is the mark in question? Will the mark be used in all the countries? These are just a few of a number of key considerations.

Mary: It is not as simple as having one approach for a company. In many cases, whether to utilize the Madrid Protocol will depend on the mark itself.

Mark: At Townsend we have a dedicated group of attorneys that specialize in trademark law. This is what we do all day, every day. We handle portfolios for all kinds of clients both domestically and internationally, so Madrid Protocol issues fall under our umbrella of expertise. We represent large corporations, medium-sized companies, start-ups, and we deal with these kinds of issues regularly. Such intense experience, both individually and collectively, will allow us to become steeped in the intricacies of the Madrid Protocol very quickly.