Clients often ask me about the best way to pursue international trademark protection. My answer to this question, like most legal questions, is “it depends.”
Generally, a trademark owner has two options for filing international trademark applications, (1) filing directly with national or regional trademark offices or (2) filing through the World Intellectual Property Office (“WIPO”) using the Madrid System for the International Registration of Marks (the “Madrid System”). Before discussing the relative advantages of each option, let’s cover some background on each.
The Madrid System
The Madrid System is governed by two international treaties. The first is the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Agreement”), originally concluded in 1891 and amended several times through 1979, which established a “Special Union for the International registration of marks.” The second treaty is the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Protocol”), adopted in 1989 and amended through 2007, which established a framework for administering the Madrid System.
Using the Madrid System, a trademark owner may file a single international application, designating as many of the members of the Madrid Union (also known as “Contracting Parties”) as the owner would like, for protection in each of the designated Contracting Parties. At the time of filing, the owner pays a single fee for the entire application; the amount of the fee depends on the designated Contracting Parties and the number of classes the application covers. Currently, the Madrid Union has 112 Contracting Parties, covering 128 countries.
Under the Madrid System, WIPO performs a “formal examination” of the application. This formal examination ensures that the application meets formal requirements but does not engage in any substantive examination, such as determining whether the mark might be registrable in any of the designated Contracting Parties.
Upon successful completion of the formal examination, WIPO issues an International Registration. WIPO then notifies the designated Contracting Parties, each of which performs its own substantive examination based on its governing laws. Each designated Contracting Parties must either grant or refuse protection within a set time period (either 12 or 18 months, depending on the Contracting Party) from the date of WIPO’s notification, or the protection is deemed granted automatically. This protection is known as an “extension of protection” and acts as if International Registration were filed directly with the Contracting Party.
To apply for protection under the Madrid System, a trademark owner must meet two criteria. First, the owner must be a citizen of, domiciled in, or have a commercial establishment in, one of the Contracting Parties of the Madrid Union. Second, the trademark owner must also have filed a “basic application” with the trademark office of that Contracting Party, referred to as the “Office of Origin.” The basic application is a normal national or regional application according to the procedures of that Contracting Party. (I use the term “region” here to refer to regional organizations such as the European Union Intellectual Property Office and the African Regional Intellectual Property Organization).
The International Registration, along with the extensions of protection in the designated Contracting Parties) are dependent on the scope of the basic application for a period of five years. During that period, if the basic is canceled or limited, so are the International Registration and the extension of protection.
In a bit more depth, the process works as follows:
- The Applicant files the basic national or regional application in the Office of Origin.
- Within the six-month priority period specified by the Paris Convention, the Applicant files an international application under the Madrid Protocol in the Office of Origin, claiming the priority of the Basic Application.
- The Office of Origin certifies that the particulars (e.g., the Applicant, the mark, the goods and services description) in the international application are the same as those in the basic appliation and then forwards the international application to WIPO (known in this context as the “International Bureau,” or “IB”) in a timely manner, as required.
- The IB performs the formal examination.
- Upon successful completion of the formal examination, the IB records the mark in the International Register, publishes the mark in the WIPO Gazette of International Marks, and issues an international registration certificate. At this point, the Applicant has an international registration for the mark.
- The IB then notifies the designated Contracting Parties of the international registration.
- The trademark office of each designated Contracting Party performs substantive examination of the International Registration within the time period specified for that Contracting Party. The Contracting Party conducts the examination according to its national or regional laws and procedures.
- If the Contracting Party does not refuse the application, the International Registration acts as a national or regional application of that Contracting Party.
- If the Contracting Party does refuse the International Registration, the procedures of the Contracting Party are used to conduct further examination. If the Contracting Party maintains the refusal, that refusal is then reported to the IB.
- Renewal and maintenance of the mark (changes in ownership, contact information, and the like) are handled centrally through the IB.
Direct Filing
In contrast to filing through the Madrid System, direct national filing can be relatively inconvenient and expensive. Generally, a trademark owner will file the same “basic application” in its home country and then file directly in the national (or regional) trademark office of each country or region in which it seeks protection. Such applications can be filed with or without a claim for the right of priority of the basic application, under the Paris Convention for the Protection of Industrial Property).
This process does not benefit from the administrative convenience of the Madrid System, so it generally involves retaining local counsel in each region or country of interest, who then prepares and files a trademark application directly in the applicable trademark office.
Advantages of the Madrid System
Many of the advantages of applying for international protection through the Madrid System related to cost and convenience. Direct filing requires more advanced planning than a Madrid System filing, to allow time to obtain and instruct local counsel, and time for local counsel time to prepare and file the application. Moreover, the addition of local counsel to the process and the fees paid for direct national applications significantly add to the initial cost of filing the applications.
In contrast, the Madrid system allows all adminstration to performed centrally at the IB, and all communications take place in English, French or Spanish. This generally eliminates the need for local counsel at all, unless the request for extension of protection is not refused or opposed in a Contracting Party. Further, the Madrid System avoids many of the formality requirements for directly-filed applications.
These distinctions continue throughout the life of registrations. With an International Registration, all renewals (and other actions) can be performed through the IB, in English. In contrast, renewals and maintenance of directly-filed registrations again require the employment of local counsel and compliance with local procedures.
In addition, the Madrid System allows subsequent designations, which can extend protection into new countries or regions as required by the Applicant’s business needs. In the EU in particular, a subsequent designation of the EU to an International Registration can be converted to national designations in every EU country that does not object to the mark. This procedure can allow the designation of the EU under the Madrid System to be a more convenient route to national registrations than the directly filing a European Trade Mark (“EUTM”) and converting the EUTM into national applications.
Disadvantages of the Madrid System
On the other hand, the disadvantages of using the Madrid System can be significant. By design, the Madrid System does not allow rights that exceed those of the basic mark. This includes the representation of the mark itself (including color and standard characters), as well as the goods and services and the classifications.
As a result, the scope and viability of the the International Registration and all extensions of protection directly depend on that of the basic application. If that application does not register or is canceled within five years of the filing of the Madrid application, the International Registration and all extensions of protection, are also canceled.
Likewise, if the scope of the basic application is limited within five years of the Madrid application’s filing date (e.g., during examination, on opposition, or after registration), the International Registration and all extensions of protections are limited correspondingly. There are provisions to transform the extensions of protection into direct national applications, but those procedures quite often nullify any cost savings realized through using the Madrid System in the first instance. The transformation process, however, does maintain the priority dates from the International Registration.
In contrast, a directly-filed application need have no relationship to any basic application at all, and the Applicant is free to avail itself of any procedures available under local law to obtain a registration, without the tie to the basic application, and the attendant limitations, required under the Madrid System.
Thus, the limitation of the International Registration to the scope of the basic application means that the mark itself cannot be modified to conform with local practice. Moreover, while goods and services may be limited from those in the International Registration if necessary, they cannot be broadened, which essentially imposes the description requirements of the Office of Origin (which, in the case of the United States, are notoriously strict) on all designations, regardless of whether those requirements are appropriate or necessary in a particular Contracting Party.
In particular cases, China being the foremost example, this can create significant problems for Madrid applications. China uses a strict subclassification system that does not necessarily map well to the goods and services descriptions used, for example, in the US. Thus, China’s Trademark Office will convert the goods and services identified in the International Registration to subclasses with standard goods and services identifiers.
This can leave signifiant gaps in the coverage provided by the extension of protection. Directly filing a national application in China with skilled local counsel can avoid these gaps in protection. (As a counterpoint, however, the inability to amend the goods and services description in an International Registration can be advantagous in certain situations, because it might result in the the Chinese Trademark Office accepting a description it would not accept in a directly filed national application.)
The example of China illustrates a broader principle: One of the biggest disadvantages to using the Madrid system to file internationally is related to its biggest advantage. By avoiding the cost and inconvenience of direct national filings, a Madrid application cannot benefit from the expertise of skilled local counsel and often does not provide the flexibility to maximize rights under each national or regional system.
To Madrid or not to Madrid?
To put it another way, using the Madrid System is like buying a nice suit off the rack at a department store. You can obtain a quality product quickly, conveniently, and at a realtively low cost. Direct filing, on the other hand, is like a bespoke suit. It takes more time, is less convenient, and generally costs significantly more, but it provides a product that is tailor-made to maximize strategic considerations in each jurisdiction. As such, for a relatively weak mark or a mark that is likely to be opposed, direct national filing generally is the better option.
Thus, there is no single answer to the question of whether to use Madrid or direct filing. For many marks, using the Madrid System provides an ideal balance of protection and cost (both administrative and fiscal). In other situations, for example on house marks or in cases where examination is expected to be difficult, direct filing may be more appropriate. The strength of the mark and the importance of the mark to the client can be decisive factors in deciding whether use Madrid or direct national filing.
In some cases, a hybrid approach is warranted, employing Madrid for some jurisdictions and direct national filing for others. Some situations might even call for a belt-and-suspenders approach, in which the Applicant files a Madrid application designating a particular jurisdiction (such as China) and a direct national application in the same jurisdiction, to maximize the relative advantages of both approaches.
As with any legal question, the correct answer depends on the facts of the situation. While this post provides general information about the Madrid System and its relative advantages and disadvantages, this post is not intended to be, nor should it be used as, legal advice for any particular situation. I am a lawyer, but I am not your lawyer, and you should seek advice from competent counsel before embarking on any course of action discussed in this post. If you would like for me to be your lawyer, please give me a shout.
