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Client Alert - The Madrid Protocol and the Community Trade Mark

11.01.2006

ESSENTIAL CHARACTER

The Madrid Protocol provides a centralized filing procedure for obtaining and maintaining separate national trademark registrations in any or all of the 67 Protocol countries and became effective in the United States on November 2, 2003.

The Madrid Protocol provides a centralized filing procedure for obtaining and maintaining separate national trademark registrations in any or all of the 67 Protocol countries and became effective in the United States on November 2, 2003.

The Community Trade Mark ('CTM') provides a centralized registration system in which one registration replaces national registrations in all 25 current European Union countries as well as the 2 additional countries that will join the EU as of January 1, 2007.

MADRID PROTOCOL

Application. You can use the Protocol if your company is a national of a member country (like the U.S.), is a domiciliary of it, or has a real and effective industrial or commercial establishment in it ('Country of Origin'). You use one or more trademark registrations or applications in the Country of Origin as the basis for an application for an international registration.

This international application is filed in the Trademark Office of the Country of Origin, and after a minimal examination as to formalities, an international registration is issued by the World Intellectual Property Organization ('WIPO') in Geneva, Switzerland. At the time you apply for the international registration, or any time thereafter, you may request that the international registration be extended to one or more of the other member countries. WIPO forwards this request to each extension country, which treats it as a national application having either the same filing date as the international registration (or later extension request date), or the date of the basic application, if you filed the basic application within the preceding six months.

Fees. The fees are complicated, but can easily be calculated online at http://www.wipo.int/madrid/en/fees/. By one estimate, if you file a basic application and apply for an international registration extended to 10 members countries, it would cost about one-third of the cost of filing separate national applications. Of course, prosecution problems could substantially change this cost advantage. Also, the official filing fee for extending an international registration to many countries (including the U.S.) is the same as for a directly filed application in that country.

Maintenance. The international registration, and all extensions to other countries, are granted for a term of 10 years, renewable for successive 10 year terms, from the date of the international registration. You can file all renewals, assignments, and changes of name or address centrally with WIPO in Geneva. However, countries may have additional maintenance requirements, such as the requirement in the U.S. that a declaration of use and a specimen also be filed in the U.S. Trademark Office during the 5th year of the registration and during the 6 months before each 10th anniversary (or within the 3 month grace period, with a surcharge).

Advantages

Cost savings. Although each country basically can charge its normal application fee (as the U.S. does), there will be an initial cost saving because there will be no need for local representatives, powers of attorney, legalizations or translations (everything can be filed in French, English or Spanish).

Speed of examination. Examination is limited to 18 months and may receive preferential treatment in some countries whereas examination of a national application routinely can take years.

Ease of administration; replacement of national registration. Ease of administration results from the simple application form, replacement of national registrations without loss of priority, simplified docketing and centralized maintenance filings.

Disadvantages

Related to Madrid System

Central attack; transformation. The international registration, and all extensions of it, are subject to central attack. This occurs if an opposition or cancellation is filed against the basic application or registration during the first five years of the international registration and is subsequently successful. At that point, the international registration and all the extensions are cancelled, although the extensions may be transformed into local applications upon the payment of additional filing fees and the appointment of local agents.

Illusory cost savings. Although the initial fees may be attractive because local representatives are not needed, the fees can be higher than otherwise because a local representative will be needed if (a) there is a local office action (which happens to about 80% of U.S. applications) particularly if in a language other than English; (b) there is a local opposition; (c) transformation is necessary into a local application in each extension country or (d) there are additional local prosecution, maintenance or renewal requirements (as there are in the U.S.).

Illusory speed of protection. Local opposition deadlines can be difficult to find out and a proceeding can significantly delay registration. (In the U.S., although any opposition must be filed within the nonextendable period of 120 days after publication, the proceeding can continue for years and could eventually cause a basic U.S. application, or an international registration extension to the U.S., to fail).

Mark not amendable. You cannot amend the international registration or any extensions from it.

Assignment Limitation. An international registration under the Protocol can only be assigned to businesses that are nationals of, domiciled in, or have an effective industrial or commercial establishment in, a member country.

CTM not linked. The Protocol is not linked with the Community Trade Mark system, although such linkage is anticipated sometime in the fall of 2004. Although all current and proposed members of the European Union also are members of the Protocol, it is not possible to extend an international registration to the EU as one unit as can be done with a CTM registration.

Related to U.S. Practice

Strict U.S. filing requirements. Unlike most other countries, the U.S. requires use or at least a bona fide intention to use the mark in U.S. commerce. Without a use or intention-to-use, a U.S. company's ability to file a basic application use may be delayed so individual filings may be needed in first-to-file countries to avoid a loss of priority. Companies from other countries must meet the same use or intent to use requirement when extending an international registration to the U.S.

Specific goods or services required by U.S. The U.S. requires specific goods or services to be designated. When the U.S. is the Country of Origin, the international registration and extensions to other member countries will be limited to the designation which appears in the U.S. registration, when issued. When there is another Country of Origin, the extension of the international registration to the U.S. must be limited to specific goods or services.

Form of mark inconsistencies. Although standard form block letters is the preferred form of mark in the U.S., some other countries require a mark to be used in the form registered and may not protect it against marks appearing in other forms.

U.S. Supplemental Register not applicable. The U.S. will not register a Protocol extension of a mark that is merely descriptive, primarily geographically descriptive or primarily merely a surname, if it has not acquired distinctiveness through use in the U.S. Such a mark may only be covered by direct filing in the U.S. on the Supplemental Register.

Strict examination in U.S. Since it is difficult to get registrations in the U.S., there is a greater likelihood that an international registration, and all extensions of it, will fail when the U.S. is the Country of Origin.

Related to non-U.S. Practice

Language differences. Marks registered in English in the U.S. may be used in other languages elsewhere, and an English language registration may not give sufficient protection elsewhere.

National requirements. A local agent may be useful for advice about (a) national application or prosecution requirements (like the U.S. intent to use requirement); (b) maintenance requirements (like the U.S. use declarations in the 5th year or license recordal or registered user requirements); (c) renewal conditions (like the U.S. use declaration). A local agent also may be helpful with advice as to (d) registrability; (e) possible conflicts; (f) goods or services specifications to avoid citations; (g) monitoring third-party filings or (h) compliance with local packaging, labeling and licensing laws.

COMMUNITY TRADE MARK

Application. A simple CTM application is filed in any of the 11 official languages of the EU (with a designation of a second language in one of the 5 official CTM languages—English, French, German, Italian or Spanish) in Alicante, Spain, using a single EU representative. It does not require a basic registration of the mark nor does it require use or an intention to use the mark. After examination, it is published for opposition, and if not opposed, the CTM registration is issued, usually within 24 months, for a term of 10 years, renewable for successive 10-year terms.

Fees. By one estimate, a CTM registration covering the 25 current EU member countries would cost less than the cost of filing separate national applications in two EU countries.

Maintenance. Renewals, assignments, licenses and changes of name or address all are filed centrally with the CTM office in Alicante.

Advantages. A CTM registration is independent of any local registration but can enjoy the priority of a country of origin application filed within the preceding six months. It can replace local EU registrations of the same mark for the corresponding goods or services with the same owner without loss of seniority. Use of a mark in any one EU country is deemed use in all of them. An infringer in several EU countries can be sued in a single proceeding.

Disadvantages. If the CTM registration is successfully attacked, it can be converted to local applications in non-affected EU countries but this necessitates the use of a local representative in each country with all the attendant additional costs. An assignment must extend to the entire EU as one unit not to individual countries.

GENERAL RECOMMENDATIONS

1. Use the Protocol to cover the Protocol countries that are not in the EU, but only if you are reasonably sure that (a) the basic application or registration is incontestable or otherwise unlikely to fail due to a 'central attack'; (b) the form of the mark in the basic application or registration will give appropriate protection in each extension country; (c) the specification of goods or services will give appropriate protection in each extension country; (d) the limitation of possible assignments to assignees from Protocol countries will not be a problem and (e) the inability to amend the mark will not be a problem.

2. Use the CTM to cover EU Countries (although it might be preferable to cover a single EU country as part of a Protocol filing program or in a national filing).

3. Use national filings (a) for first to file countries if a basic application or registration will not quickly be available (because of U.S. use and intent-to-use requirements, for example); (b) if an extension country has restrictive requirements (like the U.S. refusal to allow Protocol extensions to the Supplemental Register); (c) to cover countries not members of the Protocol or of the EU; (d) to cover only one EU country (since a CTM usually is preferable for two or more EU countries); or (e) to cover Protocol countries like the U.S. if any of the disadvantages summarized above may cause a problem.

ACTIONS TO TAKE

Protocol Filings. If you have one or more Country of Origin registrations that are incontestable or otherwise unlikely to be attacked, and you have an extensive portfolio of local registrations in other Protocol countries outside the EU, consider the administrative advantages of replacing the local registrations with an international registration.

CTM Filings. If you wish to cover at least two of the EU countries, file a CTM application to cover all 27 present and future EU countries.

For further information, contact:

William M. Borchard (212) 790-9290
Baila H. Celedonia (212) 790-9203
Jeffrey H. Epstein (212) 790-9209

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