*Originally posted on November 4, 2021

GlobeLast month, we discussed the importance of international trademark filings. You may recall that there are two approaches to filing in another country. The first approach, referred to as a “National Filing”, requires you to retain a trademark lawyer in the foreign jurisdiction where you wish to register your trademark. The second approach, using the so-called “Madrid System,” named after the Madrid Protocol — an international treaty — provides a system whereby you may register an international trademark with the World Intellectual Property Organization (WIPO) and designate a member country or countries for the registration (referred to as an “International Registration” or “Application”). Each designee will examine the trademark application to ensure that it meets the standards of the member country. The Madrid system is accessible through the United States Patent and Trademark Office (USPTO). So, for a U.S. applicant seeking to extend protection of its trademark to another country, what are the pros and cons of using one system over the other?

The WIPO website devotes a whole page to the “benefits of the Madrid System”. From it, you can glean four principal advantages: (1) it is equitable, that is, it is available to “small startups” or “large multinational” organizations alike; (2) it is convenient; (3) it is global in reach; and (4) it is cost effective. Let’s examine each of these points.

(1) Is it equitable? For U.S. citizens, the Madrid System does not require you to retain an attorney since applications may be submitted through the USPTO. On one hand the process is not rocket science but on the other, there are details and nuances of trademark applications that may be confusing to average folks that could lead to rejection of the application. So, you still may benefit from using an attorney to process the application. Even so, filing costs may be less expensive than filing directly in the foreign country. It’s safe to say that the Madrid System opens the process to companies big and small.

(2) Is it convenient?  At the very least, a National Filing requires an applicant to hire a lawyer in a foreign country and execute powers of attorney.  Using the Madrid System, all he/she has to do is file the International Application through the USPTO. Of course, each member country extending protection will review the application but the convenience of filing one set of papers is clearly an advantage. Moreover, if you desire to extend protection of your trademark to other countries within the Madrid System at a later date, you can do so by filing an extension of protection with WIPO. And for the EU, it can be an added bonus to file through the Madrid System because your international filing will be good in all member states of the EU.

(3) Is it global in reach? WIPO says it covers 80% of international trade. But some businesses may find that the target countries are not available through the Madrid system. For example, some Latin American and Caribbean countries are not part of the Madrid system and would require the applicant to initiate a national filing through a local attorney in the desired country.

(4) Is the Madrid System cost effective? Filing under the Madrid system may be very cost effective, particularly because one is not required to retain local counsel to prosecute his/her trademark application. Using the Madrid System, if you are filing the trademark application yourself, you may still need a U.S. attorney but you won’t have the nuisance and expense of hiring a foreign attorney.

Nothing is perfect, though. Under the Madrid System an applicant must have an extant trademark registration or application for the same trademark in his/her own country (“Home Registration“).  The International Registration will live and die with the Home Registration, meaning that should the Home Registration go abandoned or be successfully “attacked” by another trademark owner (referred to as a “Central Attack”), its corresponding International Registrations will be cancelled. While an International Registration may be converted to a National Filing to avoid cancellation, this would obviate any advantage that the International Registration provided, particularly the cost savings. Of course, this is not a problem with a National Filing since it does not rely on the existence of a Home Registration.

Another disadvantage may arise from differing trademark examination standards between the country of origin (i.e., the Home Registration) and those of the member country. For instance, the USPTO may require a very specific class designation even when a broader designation may offer the applicant more protection. Designations for clothing under IC 025 fall into this category. The USPTO will require you to designate the specific type of clothing, say “shoes”, identified by the applied-for trademark, while the EU — in a National Filing — may accept the broader and more inclusive “clothing” designation. If a broader designation is more advantageous, the applicant may be better off with a National Filing in a country which permits broad designations. 

Is it right for you? This will depend, of course, on your resources and the complexity of your trademark requirements. The Madrid System is indeed less expensive for multi-country registrations but if the scope of your international operations is great and you desire broad protections, it may be advantageous to perform National Filings. Of course, if your target countries are not signatories of the Madrid Protocol, you will have to resort to National Filings.

— Adam G. Garson, Esq.