Update on cost savings using international trademark filing systems
Posted in Trademarks
Update on cost savings using international trademark filing systems

The Community Trade Mark ("CTM") has had significant regulatory changes including, since March 23, 2016, being called the European Union Trade Mark ("EUTM").

You can sometimes save significant costs using the EUTM or the Madrid Protocol. 

If you are considering an international trademark filing program, there are two major multi-country systems you should consider instead of automatically arranging for national filings.

They are not for everyone, but in an appropriate case, the cost savings can be significant.

--The European Union Trade Mark provides one registration for all 28 current European Union countries. 

--The Madrid Protocol provides a centralized filing procedure for obtaining and maintaining separate national trademark registrations in any or all of the almost 100 Protocol member countries. 

European Union Trade Mark 

Application. A very popular procedure is to file a simple EUTM application in Alicante, Spain.  Filing does not require use of the mark or a declaration of an intention to use it, and you can file it yourself. Professional assistance may be advisable, however, because there have been some technical changes regarding the scope of protection of marks registered in black and white, the scope of goods or services covered when only class headings were designated, and the time when a claim to priority from a country of origin application must be made.

After it is examined for inherent registrability (but not for conflicting marks), your application is published for opposition. If it is opposed, there is a cooling-off period of 2 months (extendable on mutual consent to 24 months) during which you can settle the dispute.   If it is not opposed, you will get the EUTM registration, usually within 24 months, for a term of 10 years, renewable for successive 10-year terms. 

EUTM Cost SavingIt has been estimated that one EUTM registration covering the 28 current EU member countries would cost less than the cost of national registrations in 2 countries.  Starting March 23, 2016, the official filing fees must be paid at the time of filing, not within a one-month grace period.  They are now about the same for 2 classes as they previously were for 3 classes, and the official renewal fees have been substantially reduced.

EUTM Advantages.

--An EUTM registration stands on its own but can enjoy the filing priority of an application you filed within the preceding 6 months in any of the 175 member-countries of the international convention known as the Paris Union if you claimed that priority at the time you filed the EUTM application. 

--An EUTM registration can replace your national registrations of the same mark in EU countries for the same goods or services with the same owner. 

--Your administration is simplified because you file renewals, assignments, licenses, and changes of name or address centrally with the EUTM office in Alicante. 

--Your use of a mark in some EU countries may be deemed sufficient use to maintain the EUTM registration for all of them. 

--You can use a single proceeding to sue an infringer in several EU countries. 

EUTM Concerns.

--It used to be common for an EUTM application to designate class headings when you intended to cover all goods and services in that class.  Now, however, a class heading is interpreted literally, so you should specifically list any goods or services of interest in the class but not listed in the class heading.

--A mark used in color may no longer be adequately protected by an EUTM registration showing the mark in black and white or greyscale if color materially changes the commercial impression of the mark.

--If your EUTM application is successfully attacked by someone with a prior national right or EUTM right, you will have additional costs if you choose to convert your EUTM application into individual country applications in non-affected EU countries. 

--You can assign your EUTM registration only for the EU as a whole, not for individual countries.

Madrid Protocol 

Application.  If your business is a national of a Protocol 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 can file an international application in the Trademark Office of the Country of Origin based on one or more local trademark registrations or applications. 

The international application is forwarded to the World Intellectual Property Organization ("WIPO") in Geneva, Switzerland, which issues an international registration ("IR").  

At the time you apply for the IR, or any time thereafter, you may request an extension of the IR to one or more of the other Protocol member countries or jurisdictions (which include the entire EU by way of an EUTM). 

Each extension country treats the extension request as a national application. 

The IR, and all extensions, are granted for a term of 10 years, renewable for successive 10-year terms, counted from the date of the IR (not from each extension registration).

Madrid Cost Saving. The fees are complicated, but can be easily calculated online at http://www.wipo.int/madrid/en/fees/calculator.jsp. What you are saving is the fees for local counsel in each extension country, and there is no need for powers of attorney, legalizations or translations. By one estimate, if you file a basic application and apply for an IR extended to 10 members countries, it would cost about one-third the cost of filing separate national applications. 

Madrid Advantages.

--Each extension country must examine your application within 18 months instead of the years some routinely take, and this may give you preferential treatment in some countries. 

--Your administration is simplified because you file renewals, assignments, licenses and changes of name or address centrally with WIPO in Geneva. 

Madrid Concerns. 

Concerns Related to Madrid System 

--The international registration and all extensions are subject to central attack — if your basic application or registration fails, in whole or in part, during the first 5 years of your IR, your IR and all extensions are cancelled to the same extent.  In that case, you may transform the extensions into local applications, but  they are subject to national examination and you must engage local counsel and pay additional filing fees. 

--Despite initial cost savings, a local representative will be needed if (a) there is a local office action; (b) there is a local opposition; (c) transformation is necessary; or (d) there are additional local prosecution, maintenance, or renewal requirements. 

--Local office actions having short response deadlines may be delayed in getting to you. 

--Opposition deadlines can be difficult to determine. 

--You cannot amend the mark covered by the IR or any extensions of it. 

--You can assign an IR or an extension only to a business having a Country of Origin in a Protocol member country.  

Concerns Related to U.S. Practice 

--Unlike most other countries, the U.S. requires use or at least a bona fide intention to use the mark in U.S. commerce, which may delay your ability to file a basic applications.  So direct national filings may be needed in first-to-file countries. 

--The U.S. requires you to specify goods or services with particularity. If the U.S. is the Country of Origin, this limits the breadth of coverage under the IR and its extensions. 

--Although the use of standard characters is preferred in the U.S. and covers all forms of display, other countries require a mark to be used in the registered form of display.  

--Since it is difficult to get registrations in the U.S., there is a greater likelihood that  your IR and all extensions will fall during the central attack period.  

--Regardless of centralized maintenance, owners of extensions to the U.S. are required to file a declaration of use with a specimen in the U.S. Trademark Office before the 6th and each 10th anniversary of the U.S registration (not the IR). 

Concerns Related to non-U.S. Practice 

--Marks registered in English in the U.S. may be used in other languages elsewhere, so an English language extension may not suffice. 

--You may find local counsel useful for advice about local requirements. 


In appropriate situations, you can save significant costs by using these multi-country trademark systems.  So, you should discuss their applicability, advantages,  and concerns with your legal advisor when planning the strategy for an international trademark filing program.

For further information, please contact William M. BorchardJeffrey H. Epstein, or your CLL attorney.

This ON MY MIND™ Blog post © 2016 by Cowan, Liebowitz & Latman, P.C., New York, NY.  

Suggest topics for future Blog posts to law@cll.com.

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