Utilizing Utilizing The Madrid ProtocolThe Madrid Protocol

Todd S. Bontemps, Esq.Todd S. Bontemps, Esq.Cooley Godward LLPCooley Godward LLP

Christian LarsenChristian LarsenCooley Godward LLPCooley Godward LLP

Legal Texts regarding the Madrid System: http://www.wipo.int/madrid/en/index.html

The Madrid ProtocolThe Madrid Protocol

What is it?What is it?

When, How and Why should When, How and Why should we use it? we use it?

What are the Pros/Cons?What are the Pros/Cons?

Quick SummaryQuick Summary

One Application, one fee, yields an One Application, one fee, yields an International Registration (“IR”) which International Registration (“IR”) which provides protection in multiple countries.provides protection in multiple countries.

One renewal deadline (with 10 yr. terms), One renewal deadline (with 10 yr. terms), One registration number and One registration number and One filing possible for amendments and One filing possible for amendments and transfer of ownership.transfer of ownership.

Add’l Countries may be designated at any Add’l Countries may be designated at any time. time.

Organizations may contract to the MPOrganizations may contract to the MP

The Madrid System The Madrid System (Madrid Agrt vs. Madrid Protocol)(Madrid Agrt vs. Madrid Protocol)

The US is now a party to the Madrid The US is now a party to the Madrid Protocol (but Protocol (but notnot the Madrid the Madrid Agreement) and filings are expected to Agreement) and filings are expected to commence in November or December commence in November or December 2003.2003.

A List of Contracting States may be A List of Contracting States may be found at: found at: http://www.wipo.int/madrid/en/members/pdf/members.http://www.wipo.int/madrid/en/members/pdf/members.pdfpdf

(see Attachment ‘A’)(see Attachment ‘A’)

““MA,” “MP,” “MA/MP”MA,” “MP,” “MA/MP” ? ?

A US entity may designate any MP or A US entity may designate any MP or MA/MP country in its IR. However, a MA/MP country in its IR. However, a US entity may US entity may notnot designate an MA- designate an MA-only country.only country.

Conversely, any MP or MA/MP Conversely, any MP or MA/MP country may designate the US in its country may designate the US in its IRIR

What Is It?What Is It?

MP Application is a MP Application is a procedureprocedure for filing for filing multiple foreign applications, and is:multiple foreign applications, and is:

Based on a national application Based on a national application oror registration registration

In French or EnglishIn French or English

Subject to an 18 month examination process Subject to an 18 month examination process (see opposition exception, up to 7 months)(see opposition exception, up to 7 months)

Paid for with a single fee.Paid for with a single fee.

Fee BreakdownFee Breakdown

Basic Filing FeeBasic Filing Fee

Designation FeeDesignation Fee

Int’l Class Fee (beyond initial 3 classes)Int’l Class Fee (beyond initial 3 classes)

Handling Fee Handling Fee

List of current Fees: List of current Fees: http://www.wipo.int/madrid/en/fees/pdf/fees.pdfhttp://www.wipo.int/madrid/en/fees/pdf/fees.pdf

(see Attachment ‘B’)(see Attachment ‘B’)

MP Filing Procedure (US Office of Origin)

USPTOIR Request submitted

The Request mayaccompany

the Origin App. USPTO

Certifies the IR [i.e. conforms

to corresponding US app/reg.]

WIPOReturns to USPTO

for correction [3 Mo. Deadline]

Examined in each of theDesignated Countries

WIPOForwards

Requests to Designated

CountriesUSPTOForwards IR

to WIPO[2 MO Deadline to retain Origin

App. date]

WIPOWIPO Confirms Confirms

Basic Reqs MetBasic Reqs Met

NOYES

““Country of Origin” Country of Origin” DefinedDefined

Applicant’s country of origin is any Applicant’s country of origin is any country party to the Protocol country party to the Protocol and and where Applicantwhere Applicant

has a real and effective industrial or has a real and effective industrial or commercial establishment,commercial establishment, or or

domicile,domicile, or or

is a nationalis a national

Office of OriginOffice of Origin

Date of Office of Origin Application is the Date of Office of Origin Application is the IR Effective Date IR Effective Date

The IB does not examine marks for The IB does not examine marks for registerability or cite identical & similar registerability or cite identical & similar marks. Examination and/or citations are marks. Examination and/or citations are handled by the offices of the designated handled by the offices of the designated countriescountries

A change of ownership may change A change of ownership may change whether the MA or the MP governs an IR.whether the MA or the MP governs an IR.

Madrid Protocol ProsMadrid Protocol Pros

Basic filings may be made without obtaining local counsel. Basic filings may be made without obtaining local counsel.

Paris Convention priority can be claimed without the need to institute separate national filings.

Additional countries may be designated at anytime (e.g., Additional countries may be designated at anytime (e.g., the EU may be designated once it accedes)the EU may be designated once it accedes)

After 5 years the IR registration becomes independent of After 5 years the IR registration becomes independent of the origin application/registrationthe origin application/registration

Renewals and amendments to foreign registrations - Renewals and amendments to foreign registrations - single form, single fee.single form, single fee.

IR will envelope prior national MP or MA/MP member trademark registrations.

Pros Pros (cont’d)(cont’d)

Renewals and amendments to Renewals and amendments to foreign registrations - single form, foreign registrations - single form, single fee.single fee.

IR will envelope prior national MP or MA/MP member trademark registrations.

Cons Cons

IR is dependent on the initial application IR is dependent on the initial application or registration of origin (home or registration of origin (home application/registration) for a 5 year application/registration) for a 5 year period.period.

Amendments or cancellation or Amendments or cancellation or withdrawal of the application or withdrawal of the application or registration of origin is a “central attack” registration of origin is a “central attack” to the entire IR application/registration. to the entire IR application/registration.

Cons Cons (cont’d)(cont’d)

Due to the shortened examination Due to the shortened examination period required by the MP (12-18 mos.), period required by the MP (12-18 mos.), the USPTO is likely to require e- the USPTO is likely to require e-filings and may need to filings and may need to reducereduce Response to Office Action deadlines.Response to Office Action deadlines.

The procedures and rules for amending The procedures and rules for amending a mark (i.e. material alteration) may a mark (i.e. material alteration) may not translate to the resulting IRnot translate to the resulting IR

CancellationCancellation

Under the MP, an IR is dependent on Under the MP, an IR is dependent on the home registration for 5 years, the home registration for 5 years, however, should the home registration however, should the home registration be successfully cancelled, the IR may be successfully cancelled, the IR may be converted to national registrations be converted to national registrations (in those countries where the IR was (in those countries where the IR was not rejected) with the same priority not rejected) with the same priority date as the original IR. date as the original IR.

Converting NationalConverting National

An application which is rejected may An application which is rejected may be converted to independent national be converted to independent national applications although no IR applications although no IR registration will issue (rights will be registration will issue (rights will be preserved partially)preserved partially)

Foreign / US Counsel Foreign / US Counsel

Likely OA–Triggers: Color applications are submitted to the USPTO in black & white and this procedure does not comply with the IB. A second drawing of the mark in color will be required. Goods / Services descriptions will often be overly broad

Misc.Misc.

NEW Filing Basis - The MP adds a fifth filing basis for registration. Section 65(a): foreign MP applicants can file as MP registrants.

Double Publication - The issues surrounding publication in the WIPO Gazette and republication in the US OG, as well as the issues surrounding extensions to oppose and the 7 month deadline imposed by the MP, are still up in the air.

HypoHypo

o Software company based in Software company based in Seattle.Seattle.

o Has a subsidiary office in Has a subsidiary office in Australia, and has 3 Australia, and has 3 distributors in the UK.distributors in the UK.

o Wants to file Wants to file SiCLSiCLoneone mark mark in:in:

US, Canada, Australia, UK, US, Canada, Australia, UK, Germany, Norway, Japan, Germany, Norway, Japan, Singapore, and ChinaSingapore, and China

CLIENT

HypoHypo

o ““Hey, Thanks A Bundle, Hey, Thanks A Bundle, Cooley!”Cooley!”