In Trademark Registration Goes Global, I discussed two routes US brand owners can take to secure international trademark registration. The first, the Madrid Protocol allows US trademark owners to file for protection in member countries directly with the US Trademark Office. Foreign trademark owners can also use the Madrid Protocol to file into the US from their home base.

The Madrid Protocol is designed to reduce fees and complexities for protecting brands in the global marketplace. At first blush, it seems smart to use Madrid Protocol as a home based for  filing foreign registrations. However, my experience has shown that’s not always true.

While Madrid Protocol can avoid the cost of foreign trademark lawyer,  government filing fees in each country remain the same. The cost savings may not be worth it. Indeed, there are several disadvantages inherent in use of Madrid Protocol. Indeed, these pitfalls can result in insufficient protection, failed registration attempts, and missed deadlines.

Keep the end goal in mind, successful registration that provides strong protection. Wasted filing fees,  marginal protection, and loss of foreign filings is not a successful outcome.

Fact Number 1:

Madrid Protocol filings must be based upon an existing US Registration

Successful foreign registration via Madrid Protocol stands or falls based upon the issuance of a U.S. trademark registration. In one client’s case, a non-expert patent attorney used Madrid Protocol to filed in foreign countries. He did so before the US registration was finally approved. The attorney had based the Madrid Protocol upon the pending US application. A third party successfully challenged the US application. As a result, the client (who had by this time had sought our help), also lost all pending foreign applications. Had the client filed foreign applications directly through foreign counsel this would not have happened. Loss of the US application would not have affected the outcome of pending foreign applications.

For this reason alone, I am not a fan of the Madrid Protocol system. This is particularly true where the client’s US registration is still pending, or involves a weak mark that has a greater risk of be challenged. I use the Madrid Protocol sparingly. Even then, I  always rely upon our experienced team of foreign associates in countries around the globe.

Fact No. 2

Madrid Protocol registrations issue only for the same items registered in the US.

US Trademark Registrations cover only goods and services being sold

US trademark registrations issue only for goods or services for which the trademark is in actual use. This means the rights of US trademark owner are only as broad as the goods and services that are being sold in the US. This is exactly the opposite of the rest of the world, where no use is required to register a trademark. Because US trademark registrations can issue only for items being sold, US owners are at a decided disadvantage over our foreign counterparts.

Filing direct means broader protection and no need to proof use

For this reason, country direct Filings often provide a great scope of protection. Here’s an example. A European Trademark registration (EUTM), is a fabulous way for a US brand owner to obtain a registration in 27 countries of the European Union for the price of one! Suppose the US brand owner is selling only tee-shirts in the US. The US registration can cover only what’s being sold, namely tee-shirts.

If the US trademark owner files for an EUTM via Madrid Protocol, the registration in the EU can also cover only tee-shirts. Contrast the very different result if file directly for the EUTM through foreign associates.  Since no use is required, the same client can file for an EUTM application through our foreign associate and include a claim to  register all items of clothing the same category class without proof of use, for the same government filing fee.  Moreover, by paying modest additional filing fees, the direct EUTM filing can designate other related services in different classifications. For example, we could file for handbags and or belts, and perhaps even an online store to protect a website where the tee-shirts are being sold. The result is much broader and stronger protection for the mark in 27 countries of the world than taking the Madrid Protocol route to the EUTM. The same is true in many other countries around the globe.

Fact No. 3

Response deadlines can be short and easily missed.

Most trademark applications receive some sort of initial rejection. For example, in the US the initial rejection rate hovers consistently at 86-87%. In the US, we are used to a six-month window within which to respond to any Office Actions. This is not true in some foreign
territories, where for example the response times are much shorter. China for example allows only 30 days within which to respond to Office Actions. I’ve had instances where the deadline passed before we received notice that an Office Action had issued.

Office Actions issued by individual countries are routed through WIPO, which then notifies the US trademark owner or its attorney of record. If there is no foreign attorney designated as a representative on the filing, no one in the local country will receive notice in a more timely manner. As a result, it may be impossible to respond to local refusals and deadlines if the receipt of Office Actions are delayed in transmittal from WIPO.

When to Use Madrid Protocol

Madrid Protocol has its advantages when there is a US trademark registration in place for a mark that is strong and unlikely to face third party challenges. Even then, one should decided whether the breadth of the US registration will provide sufficient pre-emptive coverage in foreign countries.

Remember competitors and other users of the same mark in the foreign countries are able, and likely to obtain a registration covering a broader range of goods or services.  Relying solely upon a narrow US registration as the sole basis for all global trademark protection is often not advisable.

I typically develop a unique filing strategy for each client, most often using a combination of Madrid Protocol together with direct filings in certain countries where Madrid Protocol is not an option, or great protection seems like a smart move.