The World Intellectual Property Office (WIPO) registers trademarks internationally through the Madrid Protocol. This system enables a trademark owner to protect a mark in multiple countries by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).
A WIPO press release issued in March 2009 highlighted a new record for international registrations in 2008, “with WIPO receiving a record 42,075 applications under the 84-member Madrid system for the international registration of trademarks, representing a 5.3 percent rate of growth. Filing activity was stronger in the first six months of the year (up 6.9 percent compared to the same period in 2007) than in the second half of 2008 (up 3.9 percent), mirroring a slowdown in global economic conditions.”
European Union member states accounted for over half of the international applications in 2008, including both the international applications filed through the national trademark offices of the EU countries and those filed through OHIM. German entities submitted 6,214 applications, representing 14.8 percent of the total and a growth rate of 2 percent. Applicants in France represented 10 percent of the total, a 7.3 percent increase over 2007. Businesses in the United States filed 8.8 percent of the total number of applications, showing a slight decrease (down 1.5 percent) compared to 2007.
For the fourth consecutive year, China was the most designated country, with 4.7 percent of the total number of new designations, representing a 6.9 percent increase in such designations over 2007. The second most designated country was the Russian Federation with 16,768 designations (up 8.5 percent), followed by the United States with 15,715 designations (up 7.5 percent), Switzerland with 14,907 designations (up 2.6 percent), the European Community with 14,502 designations (up 13.8 percent) and Japan with 12,748 designations (up 3.7 percent). For the complete press release, see www.wipo.int/pressroom/en/articles/2009/article_0004.html
An attorney relatively new to the international registration system can learn about the important strategic concerns in a host of articles, many of which have appeared in the INTA Bulletin. And INTA’s online Practitioner’s Guide to the Madrid Agreement and Madrid Protocol is an invaluable resource for Madrid novices and experts alike.
This article discusses ten tactical and administrative matters that can make prosecuting and maintaining Madrid Protocol applications and registrations surprisingly challenging.
1. Learn a new language, replete with acronyms.
As with any formalized filing system, a number of MP entities, administrative bodies, parties and procedures are referred to by their acronyms. Some key terms and acronyms used in this article are:
IB: International Bureau (also known as WIPO)
IR: International Registration
MP: Madrid Protocol
ROMARIN: Read-Only-Memory of Madrid Active Registry Information
Available in English, French and Spanish, the WIPO website contains all manner of information. Spend a few minutes on the WIPO website early and it could well save you considerable difficulty later. Forms serving a multitude of purposes are at www.wipo.int/madrid/en/forms/
. Check the FAQs at www.wipo.int/madrid/en/faq
2. Focus on clearance activities: they can be even more significant.
While the MP application system is a simpler and less expensive way to get international protection, it also enables other trademark owners to simply request protection extensions based on either a new application or an existing registration in a member country. Thus, the low cost of seeking international protection continues to encourage applicants to establish protection in more countries.
The Paris Convention, an international treaty, allows an applicant to subsequently file in another Paris Convention signatory country, either nationally or under the MP system. An applicant can claim priority based on the filing date in the home country, as long as national or MP applications are filed within six months of the filing of an application in the applicant’s home country.
Given the ease of seeking international protection under the MP system and the potential six-month window for filing under the Paris Convention priority, it may be wise to include a search of the IR databases in preliminary trademark clearance screenings. Of course, the decision whether to expand the scope of clearance activities (and incur additional expenses) must be made on a case-by-case basis.
3. Note some exceptions to the rule.
Though the majority of MP members adopted the Madrid Protocol as written, some member countries carved out exceptions to the general rules. For example, under the MP, local trademark offices must issue a provisional refusal, if one is necessary, within 12 months of the “date of recording,” which is the date of notification from which the time limit to issue a refusal starts. (This date is at number 580 on a ROMARIN record.) However, more than 35 countries have elected for an 18-month refusal period.
There are other variations in procedures, including that some members require payment of additional “individual” fees, allow an opposition after the 18-month time limit for prosecution and require an applicant to declare an intent to use. These exceptions are posted on the WIPO website or in the Gazette, under “Declarations Made by Contracting Parties of the Madrid System under the Agreement, the Protocol and the Common Regulations.”
4. Don’t look only for certificates to know protection was granted
Only certain countries issue printed notices of a grant of protection or issue registration certificates, confirming that a mark is protected under the MP system. See www.wipo.int/madrid/en/members/offices_rule17_6.html
. So, if the applicant receives no provisional refusal within 12 months after the date of recording, an applicant can presume that the extension of protection was granted. But remember, some countries have opted for an 18-month period, rather than 12 months, to issue an examination report.
The 18-month examination period is not a problem, but it makes recognizing a grant of protection more challenging because there is not a complete overlap in the countries that issue printed notices and those that take as long as 18 months to issue a provisional refusal. Moreover, because most docketing systems work by recognizing and recording incoming documents, the absence of a written confirmation requires a visual review of a WIPO record (e.g., a ROMARIN record) to confirm that the application was not rejected either finally or provisionally. See www.wipo.int/madrid/en/romarin/. Also see Madrid Information Notices 22/2008 and 2/2009, Additional Information Available in the ROMARIN Database. (The ROMARIN database contains all international marks currently in force in the International Register. An online version of ROMARIN, updated daily and free, is available at www.wipo.int/romarin. The ROMARIN database contains a more detailed history of international marks than the Madrid Express Database, though skeletal records may appear earlier on the Madrid Express Database.)
5. Know that MP registration assignments are restricted.
Many countries do not (yet) adhere to the MP, including Canada, Hong Kong, India, Israel, Mexico, New Zealand, Philippines, South Africa and Taiwan, as well as most South American countries. (See www.wipo.int/madrid/en/members/
for a current list of MP members.) This is most obviously significant if the applicant’s countries of interest are not MP members, but it can also be an obstacle if there is an acquisition of a registrant/applicant by an entity from a non-MP country. This is because an IR cannot be transferred or otherwise assigned to an entity organized under the laws of a non-MP member country. Thus, if the applicant has an exit strategy of being acquired, national applications should be filed.
6. Maintain your docket: some jurisdictions require affidavits of use, with different filing periods from a national registration.
One of the major benefits of the MP system is the ability to renew an IR through WIPO for all the designated countries. But, while a WIPO renewal makes it unnecessary to file a Section 9 renewal application in connection with a U.S. grant of protection, it remains necessary to file a declaration of continued use (Section 8 affidavit) within the six months before the end of every ten-year period from the date of the U.S. registration, which is not the same date as the issuance of the IR. Of administrative significance, there is only a three-month grace period, and not the six-month grace period available for a U.S. national registration. Moreover, the registrant must file a declaration of continued use (Section 8 affidavit) between the fifth and sixth anniversaries of the U.S. registration date. Unlike a U.S. national registration, there is no grace period.
Legislation passed recently by the U.S. House of Representatives and U.S. Senate and awaiting the President’s signature would harmonize the grace periods for Madrid filings in the United States with the grace periods for trademark registrations filed in the United States. This legislation is likely to be enacted into law, and the U.S. Patent and Trademark Office (USPTO) will be issuing guidance to users on the affidavit requirements and grace periods.
7. You can transform an IR if the underlying application is refused or the underlying registration cancelled.
After an IR issues, it is vulnerable for the first five years of registration. The viability of an IR depends on the status of the base application or registration. If, within that five-year period, the base application is finally refused by the relevant administrative body or the issued base registration is successfully cancelled by a third party, the IR falls along with it and the IB cancels the IR.
The IB calculates the effective date of the IR cancellation from the date it processes the notification of cancellation of the base application or registration. The IB notifies the IR holder of the cancellation immediately on taking effect and the date that the IR was cancelled. The IB also notifies the administrative offices in designated countries of the cancellation, giving the IR holder three months from the cancellation date to transform the IR into national registrations.
Thorough clearance of the mark in the jurisdiction of the base application or registration can be more significant, in order to potentially avoid challenges from third parties to the base application/registration and consequently the IR. In addition, an applied-for mark can be unregistrable in the home jurisdiction because it is considered merely descriptive or misdescriptive, geographically descriptive or misdescriptive, or generic, thus jeopardizing an IR.
8. Restrictions in the base registration limit the scope of goods and services in the IR.
Another potential issue arises if the applicant relies on a base application or registration that contains a specific and narrow description of goods and services. If an applicant desires broader protection than that which is permitted in a “restrictive” country like China or the United States, it may be advantageous to file national applications, rather filing under the MP, to allow for expansion of the list of goods and services to be protected.
9. Adhere strictly to the Nice Classification System.
The MP System does not allow you to reclassify goods or services for registrations accepted by the IB. Stated slightly differently, goods and services classified by the IB cannot be reclassified during examination in a designated country in a manner that differs from the classification in the IR. If a designated member state refuses certain goods or services in the classification of goods and services accepted by the IB, the goods and services can be amended only within the scope of the classification accepted by the IB, which strictly follows the Nice Classification System. To the extent that the IB classifies goods and services differently than do member states, it would be wise to review whether specific goods and services are similarly classified under the Nice system as compared to at least the home registrar. See www.wipo.int/classifications/nivilo/
For example, an IR encompassing key chains under Class 6 may be accepted by WIPO, but when the USPTO examines a request for extension of protection for those goods it will likely require that the applicant specify the material of which the goods are made—that is, are the key chains made of metal (Class 6), precious metal (Class 14), imitation leather or leather (Class 18) and/or plastic or other non-metal, non-leather materials (Class 20). Thus, the USPTO could specify only key chains made from metal (though not precious metal), under Class 6.
If a change in classification is inadvertently accepted during examination by a member country, it will ultimately be refused by the IB upon notification of the final grant of protection. Ultimately, the scope of the identification for purposes of permissible amendment is limited by the classification in the IR.
10. Relying on class headings to broaden the scope of protection may not work.
Another issue related to classification may arise if the base registrar for the base application or registration accepts class headings but a designated extension country does not. Goods and services described using class headings will not necessarily allow for expansion of an application if the initial language is not considered broad enough to encompass specific goods or services—even if such goods and services would be classified in the same class.
For example, under Class 37, an applicant may identify the class heading as “Building construction; repair; installation services; maintenance services relating to the aforesaid.” During examination, an official action might require specificity as to the relevant services. If the applicant were then to describe “dry cleaning services,” which are classified under Class 37, such services would be rejected as outside the scope of the initial application, as dry cleaning services are not encompassed by the specific language in the class heading.
As the MP system continues to be accepted as a viable and efficient filing and maintenance system, and more countries accede to the Protocol, the challenges of successfully maximizing trademark filings worldwide will also continue to grow. Relying on INTA publications, seminars and forums can assist practitioners in getting the most protection for their clients from the MP. An open dialog about the efficacies and challenges of the system is critical to maximizing its inherent capabilities.
Although every effort has been made to verify the accuracy of items carried in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2010 International Trademark Association