international trademark protection

International Trademark Protection

In Trademark 101 by Shannon Montgomery

The United States signed the Madrid Protocol way back in 2003, which provided a convenient and more cost-effective way for US trademark holders to protect their marks abroad. There are over 80 countries signed to the Madrid Protocol and that list will likely be growing in the coming years. If you do business online or overseas, and you want to protect your mark in those countries, you have the option to do so through your initial application with the USPTO. However, this process does not create a global trademark for you or your company. So with that in mind let’s look at a few facts about protecting your trademarks abroad.

No such thing as a global trademark!

I touched on this above but it’s worth repeating. Just because you have a registered trademark in one country or jurisdiction, does not mean you are protecting all over the world. There are mechanisms in place that have made it easier for trademark owners to protect their marks in other countries, but for the most part, the various trademark systems operate separately and are maintained on a jurisdictional basis.

The best way for US businesses to protect their marks abroad is through the Madrid Protocol system. When you apply for a international protection of your US mark through the Madrid Protocol your US rights are extended to the World Intellectual Property Office’s (WIPO’s) global trademark clearinghouse. There is a cost to do this, and you essentially pay each country you want protection in so it can get pricey, but it is still cheaper than going to each country individually to apply. But, here is the thing, your Madrid Protocol “application” for lack of a better way to explain it, only gives you protection in the countries you pick and pay for. Not every country that is party to the Madrid Protocol. It isn’t automatic. So this idea of global protection through the Madrid Protocol just isn’t a reality.

How to use the Madrid Protocol

The process for utilizing the Madrid Protocol isn’t too painful. There is a deadline to use the Madrid Protocol with your US application though so be aware of that. The steps to take are as follows:

  1. Own a US trademark application or have your registration;
  2. Be a US citizen, US business, or have a real and effective presence in the US, and
  3. Determine what countries you want to file in that are part of the Madrid Protocol.

Essentially, when you file your application with the USPTO you will elect to have that application forwarded to any of the countries you desire along with your fee.

Important things to note

It is worth mentioning that your filing fees for both US applications and Madrid applications are non-refundable. If your applications are denied by one or more countries, you won’t see that money again. And just like I say with US applications, you want to do a professional search in those other countries to see if your mark is already registered there or not. Keep in mind that not all countries follow the first to use rule either, some simply allow for the first to register a mark to gain priority and all the rights.

There is this pesky 5-year rule to be aware of too. For the first 5 years, extensions of protection under Madrid rely on the continued existence of your US registration. So, if your trademark application gets refused, or otherwise becomes canceled, you will need to convert any requested extension under Madrid into a direct application in that country. And this may mean hiring local counsel to handle the application and spending more money.

Finally, just because you have submitted an application via Madrid through the USPTO does not mean that the USPTO’s approval of your application will mean approval in those other countries. Each country will review your application and approve or disprove based on their intellectual property law. There is still a risk that your mark will be refused or handed something similar to an office action and again, you might need local counsel to handle it

What about non-Madrid countries?

The only way to gain protection in a country that is not part of the Madrid Protocol is to file directly within that country. You will need to know what the law in that country is, how they handle applications, and whether or not having a local attorney on your side is important. Some places not party to the Madrid Protocol include most countries in Africa, South America, and the Middle East.

To sum it all up…

A universal trademark does not exist. Just because you register here in the US does not mean your marks are protected all over the world. And, this may be fine for your business or maybe it isn’t. Decided whether or not to utilize the Madrid Protocol is something you should do prior to filing your US application so you can stay on the right timeline, and be ready to budget those additional applications in.  If you have questions on the Madrid Protocol, trademark registration, or intellectual property protection strategies, shoot me an email at Shannon@montgomerypllc.com.

 

Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.