Patently improved

European countries first recognized the importance of a borderless, international trademark system in the early 1890s by establishing the Madrid system. Since that time, 74 member states have joined the Madrid system, under which approximately 4 million trademark registrations have been issued.

After more than 14 years of discussion and legislative delays, the United States has joined the Madrid Protocol, an international arrangement for obtaining multinational trademark protection and maintaining international registrations through a centralized system.

Filing under the Madrid Protocol provides considerable benefits to U.S. corporations, partnerships and individuals. Trademark applicants gain protection in a number of countries by filing a single application and fee with a single trademark office, resulting in one registration, renewable on one date.

This streamlined process provides an alternative to filing separate applications in each country, resulting in individual registrations all carrying different renewal due dates. Additionally, the Madrid system enhances time-efficiency during trademark prosecution by using the World Intellectual Property Organization as a centralized administration office, and by instituting time limits for examination periods applicable to each member state.

The Protocol requires that an application for registration be examined and acted upon within 18 months, and in some countries, 12 months. Applicants can also take advantage of substantial cost benefits by filing under the Madrid Protocol.

“Dollar savings to businesses and other trademark owners should be significant — about one third of the cost,” says J. Matthew Pritchard IV, intellectual property attorney, The Webb Law Firm.

While providing a useful tool, the Madrid system “has its downsides,” Pritchard notes:

* If the home application (in this case the U.S. application) does not proceed to registration or is cancelled within the first five years, all international applications based on this application will also fail.

* Any changes required in the U.S. application will be applied to all corresponding international applications, a potential disadvantage for U.S. applicants due to the strict standards of descriptiveness, confusing similarity and precise description of goods or services required by the USPTO. Therefore, there may be some advantages to not filing a Madrid Protocol application if an applicant is able to gain broader protection internationally through separate national applications.

* Of concern to U.S. applicants who do business throughout the whole of North America is the fact that neither Canada nor Mexico is a member of the Madrid system, and separate national applications are required.

* Foreign counsel is still required in any country in which an application is initially rejected.