Quarterly IP Review
November 2023, Issue.
From the Desk of Scott Kaliko, Head of Intellectual Property
Do you want to expand your business and brands internationally?
If so, you should already consider obtaining trademark protection in other countries to promote your brand’s future, international expansion and stay ahead of the competition.
Through an international treaty, the United States Patent and Trademark Office (USPTO) has made it possible for you to take advantage of the World Intellectual Property Organization (WIPO) Madrid Protocol to register trademarks in over 129 countries. The Madrid Protocol helps enterprises of all sizes protect their trademarks, optimize the value of their IP portfolio and enhance their international value in a competitive global marketplace.
What is the Madrid Protocol?
The Madrid Protocol is a convenient and cost-effective solution for registering and managing trademarks worldwide. The Madrid Protocol permits a single international trademark application with the payment of one set of fees to apply for protection in up to 129 countries. Apply, modify, renew or expand your global brands through one centralized system. The International Bureau of the World Intellectual Property Organization (WIPO) administers the Madrid Protocol.
The Madrid Protocol is a filing or procedural treaty, not a substantive harmonization treaty. It was designed to provide a cost-effective, efficient, and centralized way for trademark owners—individuals and businesses—to obtain protection for their marks in multiple countries by filing one international application with the applicant’s office of origin, in one language, with one set of fees, in one currency. The office of origin for U.S. nationals is, in most cases, the U.S. Patent and Trademark Office (USPTO).
To use the Madrid Protocol, a U.S. trademark owner must already have a national trademark application filed with (called a basic application) or national trademark registration issued by (called a basic registration) the USPTO. The basic application or basic registration serves as a basis for filing an international application and obtaining an international registration from WIPO. The international registration then serves as a basis for requesting extension of protection in one or more Protocol member countries that a trademark owner designates in the international application.
It is important to note that the issuance of an international registration by WIPO does not mean the trademark is registered in the designated countries. Protection is still subject to the trademark office in each designated country examining the application according to their national trademark laws. Each designated country independently may grant or deny the registration.
An international application for international registration has the same effect as a national application for trademark registration filed directly in each of the designated countries. Once the trademark office of a designated country grants protection, the trademark is protected just as if that office had directly received a national application from the owner and registered it.
The Madrid Protocol also provides for the management of trademark registrations, such as recording changes in ownership or in the names or addresses of owners, and renewing international registrations, which are valid for 10 years and renewed for 10-year periods. The international registration owner may file a single request with WIPO and make a single payment. WIPO in turn transmits that information to the designated countries.
The international registration issued by WIPO and all the protections in the designated countries are dependent on the national basic application or basic registration. Thus, if the basic application is terminated or if the basic registration is cancelled within the first five years after the date of international registration, the international registration and all the extensions of protection in the designated countries are also cancelled. In most cases, for a U.S. trademark owner, the basic application is the national application filed with the USPTO or the basic registration is the national registration issued by the USPTO. If the basic application or basic registration fails within the five-year period, the Madrid Protocol allows the owner to transform the extension of protection into a new national trademark application in each designated country. Each new national application keeps the priority date of the original international registration.
If you are interested in obtaining an international trademark registration in order to protect your brands, please call Scott H. Kaliko at Kudman Trachten Aloe Posner LLP (KTAP) at 212-244-2609 or 917-669-5523.[i]
[i] KTAP is offering this free quarterly newsletter to better inform clients on important intellectual property news.