T.J. Romano tromano@khpatent Kolisch Hartwell, P.C. Portland, OR

1. International Trademark Protection Using the Madrid Protocol: Worth the Convenience? T.J. Romano tromano@khpatent.com Kolisch Hartwell, P.C. Portland, OR

2. Agenda • Options for Foreign Trademark (and Service Mark) Registration • Focus on Madrid System • How does the Madrid Protocol work? • What are the Pros and Cons? • Examples • Strategy Considerations • Useful Resources & Glossary

3. International Filing Options Direct Priority Direct Madrid System File U.S. Application w/ USPTO Directly File in Each Desired Country w/ Priority Claim Directly File in Each Desired Country* File International App w/ USPTO WIPO IB Reviews & Registers Each Country Examines & Grants Protection Each Country Examines & Grants Protection Each Designated Country Examines & Grants Maintenance & Admin with Each Individual Country Maintenance & Admin with Each Individual Country All Non-U.S. Maintenance & Admin with WIPO *The term ”Country” throughout includes mechanisms, such as the European Community Trademark (CTM), that confer rights to multiple countries (e.g., a CTM registration covers European Union countries).

4. What is the Madrid System? • Governed by Madrid Agreement and Madrid Protocol. • International Bureau (IB) of World Intellectual Property Organization (WIPO) administers. • 83 countries parties to the Madrid Protocol. • U.S. a party only to the Madrid Protocol as of Nov. 2, 2003. Only Madrid Protocol governs U.S. applications. • Goal: “Provides a cost-effective and efficient way for trademark holders … to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.” - USPTO Website • Madrid System is a filing and formalities system and does NOT confer substantive rights. Substantive rights come directly from each designated country.

5. Members of the Madrid Protocol

6. Notable Exceptions Canada & Mexico India Central & South America

7. Prerequisites for Using theMadrid Protocol • Active, basic application/registration required, cannot start with an international application. • Basic app./reg. must be from forum where applicant qualifies as: • having a “real and effective industrial or commercial establishment,” • having a “domicile,” or • being a “national.” • All applicants must each individually qualify in that forum. U.S. applicant basic app. usually with USPTO

8. When to File UnderMadrid Protocol • Can file an international app. based on an active, basic app./reg. at: • anytime, but within 6 months of filing date of basic app./reg., get priority claim. After six months, then no priority claim. • Can file subsequent designation(s) at: • anytime within 5-year anniversary date of international reg. if basic app./reg. is active. If within 6 months of priority date, get priority claim. After six months, no priority claim. • anytime after 5-year anniversary date for active international reg. International reg. date is filing date in each subsequently designated country.

9. Procedure: Formalities Examination • International priority date is filing date of U.S. basic app. if international app. received at USPTO within 6 months of U.S. basic app. filing date. • Otherwise, it’s date of the international registration, which is usually the date the USPTO receives the international app. (but see TMEP § 1902.04 about defects that impact international registration date) U.S. Application Filed or Registration Complete Must File International Application with USPTO, not WIPO • Use TEAS or paper form. • Designate at least one country. - Pay USPTO certification fee ($100/class), IB basic fee (starts at $675), and designated country fees (varies).

10. Procedure: Formalities Examination • Identical applicant and mark. • List of Goods & Services no broader than in the U.S. basic application / registration. • Certain indications match (mark description, three-dimensional, sound mark, color, etc.). • See TMEP § 1902.02 for all formalities reviewed. USPTO Reviews Application Formalities USPTO Forwards the Application to the International Bureau (IB) - Basic formalities met.

11. Procedure: Formalities Examination • Reviews description and classification of goods/services. • Notice of Irregularity may be sent to USPTO and/or TM Holder at this stage. • Time limits for responding. • Forms on TEAS. • See TMEP §§ 1902.05-.07. IB Reviews to Ensure Madrid Protocol Filing Req’ts are Met IB Registers & Publishes the Mark in WIPO Gazette • If formalities met, then Registration Certificate sent to TM Holder. • Designated Countries notified separately.

12. Basic Formalities Checklist • For U.S. applicant, file international app. with USPTO in English. • Include basic registration date/number, or application filing date/number, as appropriate. • File within 6 months of basic app. for priority claim. • Same applicant and mark as in basic app./reg. • List of goods and services no broader than in basic app./reg. • Designate Madrid Protocol countries for extending protection. • Pay fees. • Review TMEP § 1902 for all formalities.

13. Procedure: Substantive Examination • Refusal must be communicated to IB within 18 months (can be longer with opposition period). • IB Notifies TM Holder. Refusal Each Country Examines as if Submitted Locally Protection Granted • Country informs IB protection granted. • No refusal within 18 months, so IB extends protection automatically.

14. Maintenance • 10 year duration based on date of international registration, renewable for additional 10 year periods (6-mo reminder sent). • Fee paid to International Bureau. • Can renew electronically on WIPO website. • Name, ownership, address changes, license agreements, encumbrances, also done centrally for all designated countries.

15. Central Attack & Transformation • Within the first 5 years, any failure of the basic application or registration will result in corresponding cancellation of the international registration. • If this happens, have 3 months to apply directly with each designated country and still get the original application date, and priority date, if any. • But pay more fees and retain foreign agent(s) to file.

16. Benefits of Madrid Protocol • File international app. anytime if basic app./reg. is active. • File one application, in English, and pay one fee for all designated countries. • Foreign agent(s) not needed for filing, reducing costs. • Increasingly cost effective as more countries designated. • Basic registration can be Supplemental Registration. • 18-month refusal deadline, then automatic protection. • International registration becomes independent of basic registration after 5 years.

17. Benefits of Madrid Protocol (cont.) Simplified subsequent management: • One international registration, with one number and one renewal date. • One place to file renewals, changes of address, assignments, etc. for all designated countries • Can designate countries anytime during life of active, international registration. • Rights under international registration can be assigned separately (e.g., holder maintain rights in good A, but assign rights in good B, etc.)

18. Drawbacks of Madrid Protocol • International “registration” does not confer substantive rights. • Not all countries parties to Madrid Protocol. • Applicant cannot modify international application after filing: • No modification to recorded mark, even if mark modified in basic application. • Can’t expand or extend list of goods/services after submitted, even to include ones omitted that are in basic app./reg. • Goods/services may be narrow in scope: • U.S. registrations contain high level of specificity and based on use, each limit scope. • Goods/services in international registration, and thus in designated counties, restricted to same scope as in basic registration.

19. Drawbacks of Madrid Protocol (cont.) • USPTO must transmit international application to IB within 2 months of receipt. Otherwise, date of international registration is when IB receives, not when USPTO received. • “Central Attack” 5-yr dependency (but 3-month transformation). • Substantive Examination in Each Designated Country: • May need local agent anyway if protection refused. • Designated country can send refusal in English, Spanish, or French. • Subsequent Designation: no prorated fees and scope of goods/services always limited to international registration. • Assignee must qualify as a person, domicile, or effective business in a Madrid Protocol country to maintain international registration.

20. Example 1: Scope of Rights • Facts: Client wants to register the mark WIDGET in Europe for shoes and cars. Client filed U.S. application for shoes and cars. U.S. registration issues only for shoes. • European application filed within priority deadline using: • European application filed after priority deadline using:

21. Example 2: Cost Comparison • Client wants to obtain registrations in the following countries in one class, with a priority claim to U.S. application: Systems Available

22. Option 1: Direct Priority (CTM + National) $2500(CTM) + $2000(JP) + $1000(KR) + $600(CN) + $1500(NO) + $1000(AU) + $1000(NZ) + $1200(CA) + $1200(MX) Estimated Cost = $12,000* * Estimated Cost only includes out-of-pocket expenses (i.e., government and agency fees, foreign agent fees).

23. Option 2: Combination(Madrid + Direct Priority) $3550(Madrid) + $1000(NZ) + $1200(CA) + $ 1200(MX) Estimated Cost = $6,950* * Estimated Cost only includes out-of-pocket expenses (i.e., government and agency fees, foreign agent fees).

24. Option 3: Combination(Madrid + CTM + Direct) $2500(CTM) + $2184(Madrid) + $1000(NZ) + $1200(CA) + $1200(MX) Estimated Cost = $8,084* * Estimated Cost only includes out-of-pocket expenses (i.e., government and agency fees, foreign agent fees).

25. Strategy Considerations • No one-size strategy: each filing option has pros and cons. • Weigh cost & efficiency against importance of broad protection in each individual country. • Consider ways to avoid restricted goods/services worldwide. • Multi-nationals file outside United States with broad description and U.S. application through Madrid Protocol. • But consider risks (e.g., tax implications, etc.). • Consider using a combination of available filing options depending on where the client wants protection and which foreign markets are most critical.

26. Useful Resources • WIPO at www.wipo.int/madrid/en • Madrid fee calculator (in Swiss francs, no USPTO fees). • Review “Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol.” • Searchable online databases: • ROMARIN at www.wipo.int/romarin • Madrid Express at www.wipo.int/ipdl/en/madrid • USPTO at www.uspto.gov/trademarks/law/madrid/index.jsp • Online filing system for international applications. • Review Trademark Manual of Examining Procedure (TMEP), Chapter 1900 “Madrid Protocol.”

27. Basic Glossary of Madrid Protocol Terminology • basic application: original application filed in a qualified home forum office of applicant (e.g., USPTO for U.S. applicant) • basic registration: home forum registration that issues from basic registration (e.g., USPTO registration). • international application: filed through Madrid Protocol, and is based on an active, basic application or registration. • international registration: issues from the international application. • designated country: any country that is a party to Madrid Protocol for which an applicant requests an extension of protection under the Madrid Protocol. • subsequent designation: request by holder of an international registration for an extension of protection to additional Madrid Protocol countries after international registration issues.

28. Contact Information T.J. Romano tromano@khpatent.com Kolisch Hartwell P.C. 520 S.W. Yamhill Street, Suite 200 Portland, Oregon 97204 (503) 224-6655