Madrid Protocol – Is It Working Effectively for U.S. Brand Owners?

A panel of knowledgeable practitioners provided an overview of Madrid Protocol how it works from a U.S. perspective. The advantages and disadvantages of a Madrid Protocol registration and how it differs from the Community Trade Mark (CTM) were discussed.

Moderator:

• William R. Cohrs, Exxon Mobil Corporation (United States)

Speakers:

• Alan Morgan Datri, World Intellectual Property Organization (WIPO) (Switzerland)
• Susan Kayser, Howrey LLP (United States)
• Mariangela Sampaio, Unilever Brasil Ltda (Brazil)

The Madrid Protocol enables members to file one trademark and get protection in various countries where there is a common treaty (Madrid Protocol, Madrid Agreement, or both).  The United States, for example, is only a party to the Madrid Protocol, and as such, is limited to using the Madrid Protocol only with members of the Madrid Protocol and not the Madrid Agreement.

In order to avail oneself of the Madrid Protocol, there must be a basic mark in a contracting party (e.g. a USPTO filing/registration) and a connection between the owner of the mark and the contracting party (e.g. the other countries in which you seek protection).  The connection must be a real and effective industrial or commercial “establishment,” domicile, or nationality.  This entitlement, as defined by the law of the country in which you seek protection, is necessary.  

The most cited benefits include:

• International registration of marks, efficiency
• Less documents
• Cheaper
• Flexibility in targeting national, regional or global market
• Centralized management
• Set time limits for refusal by designated CPs
• Possibility of subsequent designation
• Replacement of pre-existing national or regional mark

The most cited disadvantages to consider for United States parties include:

• Narrower specification v. class headings
• Relative difficulty of obtaining a US registration (if refused, 3 months to file national application in each designated country)
• US requirement to use or bona fide intent to use
• No registration for US application until use

Ultimately, the practitioners warned that using the Madrid Protocol requires careful consideration.  Much like filing for a Community Trademark (CTM), a careful consideration of the countries where you want protection, the nature of the mark, the scope of goods/service, the speed of registration, ownership issues, and tax consequences is advisable.

To learn more, visit WIPO’s Madrid Protocol page at www.wipo.int/madrid.