What
is the Madrid Protocol?
The
Protocol Relating to the Madrid Agreement Concerning the International Registration
of Marks (Madrid Protocol) is an international treaty that allows a trademark
owner to seek registration in any of the countries that have joined the Madrid
Protocol by filing a single application, called an "international application."
The International Bureau of the World Intellectual Property Organization, in Geneva,
Switzerland administers the international registration system.
What
countries are members of the Madrid Protocol?
As
of November 2003, 61 countries have joined the Madrid Protocol. These countries
are called "Contracting Parties." A current list of the Contracting
Parties is available online at the World Intellectual Property Organization (WIPO)
website: http://www.wipo.int/madrid/en.
When does
the Madrid Protocol become effective in the United States?
The
Madrid Protocol goes into effect in the United States on November 2, 2003. On
November 2, 2003, U.S. trademark owners will be able to submit an international
application to the USPTO to forward to the International Bureau in Geneva, Switzerland.
The Trademark Act has
been amended by federal legislation to add provisions for implementing the Madrid
Protocol in the United States. This amending legislation is called the Madrid
Protocol Implementation Act (MPIA). The USPTO has also added new rules to the
Trademark Rules of Practice for documents relating to the Madrid Protocol. The
MPIA and the new rules are posted on the USPTO website at: www.uspto.gov.
Who can
submit an international application through the USPTO?
Any
trademark owner with an application filed in or a registration issued by the USPTO
and who is a national of, has a domicile in, or has a real and effective industrial
or commercial establishment in the United States can submit an international application
through the USPTO.
What
are the requirements for submitting an international application through the USPTO?
IMPORTANT
NOTICE: International applications must be submitted to the USPTO on paper until
the USPTO posts the electronic form for the international application on the USPTO
website. For more information, see notice posted on the Trademark page of the
USPTO website: http://www.uspto.gov/main/trademarks.htm
.
To file an international
application through the USPTO, an applicant must have a U.S. application, called
a "basic application" or a U.S. registration, called a "basic registration."
The mark and the owner of the international application must be the same as the
mark and the owner of the basic application or registration. The international
application may be based on more than one USPTO application or registration provided
the mark and the owner are the same for each basic application and/or registration.
The international application
must include a list of goods and services that is identical to or narrower than
the list of goods or services in the basic application or registration. The international
applicant must pay the U.S. certification fee(s) at the time of submission and
identify at least one Contracting Party in which an extension of protection (that
is, registration in a Contracting Party) is sought.
A
list of the minimum requirements for obtaining a date of receipt of an international
application in the USPTO is set forth in 37 C.F.R. §7.11(a). See notice of
final rules published in the Federal Register, 68 FR 55748 (Sept. 26, 2003), and
posted on the USPTO web site at: http://www.uspto.gov/web/offices/com/sol/notices/68fr55748.pdf.
The
requirements for a complete international application are set forth in Article
3 of the Protocol and Rule 9 of the Common Regulations Under the Madrid Agreement
Concerning the International Registration of Marks and the Protocol Relating to
That Agreement (Common Regulations). The Common Regulations are currently available
on the WIPO website at http://www.wipo.int/madrid/en/.
Can
a U.S. trademark owner file an international application directly at the International
Bureau?
No. The international
application must be filed through the USPTO. The USPTO must certify (review and
confirm) that certain information in an international application based on a U.S.
basic application or registration is the same as the information contained in
the basic application or registration. The USPTO then forwards the international
application to the International Bureau.
What
is the cost for filing an international application through the USPTO?
An
international applicant must pay fees to the USPTO and to the International Bureau.
The USPTO charges a fee for certifying international applications and transmitting
them to the International Bureau, called a "certification fee." The
certification fee is $100.00, per class, if the international application is based
on a single U.S. application or registration. The certification fee is $150.00,
per class, if the international application is based on more than one U.S. application
or registration.
The International
Bureau requires payment of fees based on whether the reproduction of the mark
is in black and white and/or in color, the particular Contracting Parties designated
in the international application and the number of classes of goods and services
indicated in the international application. The schedule of fees, individual fees
and International Bureau Fee Calculator are posted on the WIPO web site at: http://www.wipo.int/madrid/en/.
The international application fees must be paid directly to the International
Bureau in Swiss francs.
What
happens after the international application has been submitted to the USPTO?
If the international application
meets the requirements of 37 C.F.R. §7.11(a), then the USPTO will certify
that certain information in the international application is the same as the information
in the U.S. basic application or registration and forward the international application
to the International Bureau.
If
the international application does not meet the requirements of 37 C.F.R. §7.11(a),
then the USPTO will not certify the international application. The USPTO will
notify the international applicant of the reasons why the international application
cannot be certified. The certification fee is not refundable. The international
applicant may promptly resubmit a corrected international application based on
the same U.S. application or registration. The certification fees must be included
with the new submission.
Will
the International Bureau automatically register the mark in an international application
once it has been certified by the USPTO?
No.
Certification by the USPTO is only to ensure that the international application
is properly based on a U.S. application or registration and to validate the date
of receipt of the international application by the USPTO. The International Bureau
must still review the international application to determine whether it meets
the Madrid Protocol filing requirements. If the requirements are met and the fees
paid, the International Bureau will then register the mark, publish it in the
WIPO Gazette of International Marks (WIPO Gazette), send a certificate
to the international applicant, now called "holder of the international registration",
and notify the Offices of the Contracting Parties designated in the international
application. The WIPO Gazette may be purchased from the WIPO Electronic Bookshop
on the WIPO web site at: http://www.wipo.int/ebookshop?lang=eng.
If the Madrid Protocol
filing requirements have not been met, the International Bureau will send a notice
to both the USPTO and the international applicant that explains the problems with
the application. These notices are commonly referred to as "irregularity
notices or letters." Responses to irregularity notices must be received by
the International Bureau within the time period indicated in the irregularity
notice. Receipt by the USPTO will not satisfy this time requirement. If the irregularities
are corrected within the prescribed time, the International Bureau will register
the mark.
What
is the date of the international registration?
The
date of the international registration is the date of receipt of the international
application in the USPTO provided that the International Bureau receives the international
application within 2 months of the date of receipt in the USPTO. If the International
Bureau does not receive the international application within 2 months of the date
of receipt in the USPTO, the date of the international registration will be the
date of receipt by the International Bureau.
Can
an international applicant claim a priority filing date based on a U.S. basic
application?
Yes. A
claim of priority in an international application may be based on a U.S. application
in accordance with Article 4 of the Paris Convention even if the filing date of
the basic application precedes the implementation date of the Madrid Protocol
in the United States. The international application must both (1) assert a claim
of priority and (2) be filed in the USPTO within six months after the filing date
of the basic application that forms the basis of the priority claim.
What happens after
the International Bureau registers the mark in the international application?
Once
the International Bureau registers the mark, the International Bureau will notify
each Contracting Party designated in the international registration of the request
for an extension of protection to that country. Each designated Contracting Party
will then examine the request for an extension of protection the same as it would
a national application under its laws. If the application meets the requirements
for registration of that country, then the Contracting Party will grant protection
of the mark in its country.
There
are strict time limits for refusing to grant an extension of protection (a maximum
of 18 months). If a Contracting Party does not notify the International Bureau
of any refusal of an extension of protection within the time limits set forth
in Article 5(2) of the Madrid Protocol, the holder of the international registration
is automatically granted protection of its mark in that country.
After
the mark in an international application registers, can the holder of the international
registration request an extension of protection in additional countries?
Yes.
The holder of an international registration may designate additional Contracting
Parties in a subsequent designation. A subsequent designation is a request by
the holder of an international registration for an extension of protection of
its international registration to additional Contracting Parties.
Can
a subsequent designation be submitted through the USPTO for forwarding to the
International Bureau?
Yes.
If the holder of an international registration is a national of, has a domicile
in, or has a real and effective business or commercial establishment in the United
States and the international registration is based on a U.S. application or registration,
then the subsequent designation may be submitted on paper to the USPTO. The holder
also has the option of filing a subsequent designation directly with the International
Bureau.
What
is the duration of an international registration?
An
international registration lasts for ten years from the date of registration and
may be renewed for additional 10-year periods by paying a renewal fee to the International
Bureau.
If
the U.S. Application or registration that forms the basis of the international
registration is abandoned, cancelled or expires, will the international registration
be cancelled?
Possibly
yes. For the first 5 years, the international registration is completely dependent
on the U.S. basic application or registration. This means that, during the first
5 years of the life of the international registration, if the U.S. basic application
or registration is refused, withdrawn, cancelled or restricted, in whole or in
part, then the International Bureau will cancel the international registration.
A refusal or cancellation of a basic application or registration after the end
of the 5-year period will also result in the cancellation of the international
registration, if the action that caused the refusal or cancellation began within
that 5-year period. However, after the 5-year period has ended, the international
registration becomes independent of the basic application or registration.
Where can I get
more information about the Madrid Protocol?
The legislation, regulations and guide for implementing the Madrid Protocol in
the United States and notices regarding paper filings are posted on the USPTO
website: www.uspto.gov.
More
detailed information about the Madrid Protocol, Common Regulations, Administrative
Instructions, Guide to International Registration of Marks, Madrid Express (on-line
database), schedule of fees, individual fees and the International Bureau Fee
Calculator are available on the WIPO web site at: http://www.wipo.int/madrid/en/.
The following publications
and information technology products may be purchased with a credit card from the
WIPO Electronic Bookshop on the WIPO Web site at: http://www.wipo.int/ebookshop?lang=eng:
Madrid
Agreement Concerning the International Registration of Marks, Protocol Relating
to the Madrid Agreement Concerning the International Registration of Marks, Regulations
and Administrative Instructions (April 1, 2002) [WIPO Publication 204(E)];
Guide
to the International Registration of Marks under the Madrid Agreement and the
Madrid Protocol (2002) [WIPO Publication 455(E)];
WIPO
Gazette of International Marks [WIPO Publication 103];
WIPO
Gazette of International Marks on CD-ROM [WIPO Publication CDGMI];
Romarin
[WIPO Publication: CD-ROMARIN]
[Source: United States Patent and Trademark Office (USPTO), http://www.uspto.gov/]
