Protecting Trademarks Abroad: Madrid System vs. National...

Protecting Trademarks Abroad: Madrid

System vs. National Filing Directly in Foreign

Jurisdiction

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WEDNESDAY, JULY 17, 2019

Presenting a live 90-minute webinar with interactive Q&A

Christine P. James, Partner, Kilpatrick Townsend & Stockton, Atlanta

Matthew E. Moersfelder, Partner, Davis Wright Tremaine, Seattle

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Protecting Trademarks Abroad: Madrid Protocol vs. National Filing

Christine P. James| Kilpatrick Townsend & Stockton [email protected]

Matthew E. Moersfelder | Davis Wright Tremaine [email protected]

6


Current Madrid Protocol Membership

104 Members (Covering 120 Countries)

Most Recent Member: Canada

Waiting in the Wings:

Africa: Mauritius, South Africa

Middle East: Jordan, Saudi Arabia

Asia: Malaysia, Sri Lanka

Europe: Malta

The Americas and the Caribbean: Barbados, Brazil, El Salvador, Jamaica, Trinidad &

Tobago

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I. Pros and Cons of filing under Madrid Protocol

A. Filings

PROS

– Madrid extension has same force and effect as national registration

– Filings are easy

• Can be based on pending application or registration (or multiples)

– Filings are quick

– Single document filed with the USPTO

check the box

– No POAs

– Feedback on refusals/oppositions within 12 or 18 months

9


A. Filings – CONS Continued

– Details in your IR are identical to your US record(s)

• Can’t take advantage of defensive registration

• No local advice on strategy (unless obtained separately)

• Result may be very limited protection (e.g., China)

• Can be OK for some goods/service (e.g. Wine – there is only one subclass in China)

• Goods and services cannot be moved to other classes

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A. Filings – CONS Continued

– Provisional Refusals may arrive sporadically, be delayed, and

offer short response times

– Some jurisdictions can’t review applications in prescribed

timeframe (potential lapse of rights)

– Some jurisdictions haven’t passed enabling legislation despite

Madrid membership

– Notices of Irregularity regarding vagueness can impact others’

perception of your IR’s coverage (file responses with USPTO

promptly or risk missing deadline)

– Beware OFAC and political quagmires

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B. Renewals

PROS

– Cheap. One filing can cut the cost of renewal by

thousands of dollars

CONS

– Cannot amend marks or update logos

– Some countries may require additional national

maintenance filing in addition to Madrid filing

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C. Assignments/Updates to Ownership

PROS

– Streamlined

• Single filing for all countries

CONS

– Slow

• Recordation process is slow and it is difficult to reach people at WIPO to get information or confirmations

• Limits on assignees; must be in a country that is a signatory

– Cumbersome

• Many documents require signatures of both parties

• Prior owner of mark must sign Power of Attorney

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D. Replacement

Trademark owners with pre-existing national trademark registrations in Madrid Protocol Contracting Parties can Request an Extension of Protection in those Contracting Parties to "replace" the national registration, and still retain all of the filing dates and prosecution history with regard to the prior national registration.

PROS

– cost and time savings associated with renewals and recordation of ownership information

CONS

– details of national applications are rarely consistent, so it may be difficult to manage the logistics

– may not give you all the coverage you desire

e.g., territories (UK, Denmark)

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E. Multi-class Registrations

PROS

– Easy

CONS

– Costs later incurred

• If an IR application covers multiple classes and designates a jurisdiction that does not permit multiclass filing (e.g., Mexico), the national trademark office will review the application and divide it, requiring payment of additional fees to cover the additional classes.

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F. Dependency Period

For a period of five years from issuance of IR, the IR is “tied” to the home record

PROS

– None

CONS

– If the home application does not register, the rest of the applications may fail

– Subject to “Central Attack”

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Dependency Period (continued)

– Can cure by “transforming” the IR to national applications

– But must pay filing fees so you double the costs

– Practice Pointers:

• Wait to see what transpires with US application before extending via Madrid during Paris Convention period

• Don’t forget Madrid extensions keyed to home country applications

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II. Pros and Cons of filing National Applications

A. Scope of identification of goods/services

PROS

– Easily tailored to address business needs or potential risk factors

– Can address specific trademark office requirements (China, subclass goods)

CONS

– Possible lack of uniformity; no centralization

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B. Amendments

PROS

– Easy to address on a jurisdiction-specific basis, thus

resulting in fewer objections/office actions

CONS

– None

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C. Translations

PROS

– Ability to address nuances, dialects, local meaning

CONS

– None

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D. Renewals

PROS

– None

CONS

– Lack of centralization, additional time and cost

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E. Use of Local Counsel

PROS

– Advice, expertise, experience

CONS

– Cost

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III. Filing Outside of United States

– Filing using Madrid Protocol can be based on national

application where the applicant is domiciled, has an

industrial or commercial establishment in, or is a citizen of

one of the 120 countries covered by the Madrid Protocol

– This may allow you to file outside of the United States

• Avoid limitations of United States trademark

applications

• Still likely need United States counsel for responding to

official actions

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IV. Additional Considerations for Madrid Filings

– Initial filing cost savings from Madrid may be eliminated if

necessary to use foreign counsel to respond to office

action

– Don’t use for highly descriptive marks/potentially

problematic mark on the basis of US application

– Don’t use when you think you might benefit from local

counsel advice (or get that advice beforehand)

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Additional Considerations – Con’t

– Use it for quick protection:

• to get your “foot in the door” and circle back for

additional localized filings if necessary

• to ring-fence others for enforcement purposes/leverage

– Use it when you don’t need/want a lot of defensive

protection

• narrow identification

• looking for “freedom to operate” protection in a

country and not strong offensive protection

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Additional Considerations – Con’t

– Think carefully before using for house marks or critical

trademarks

– Great for sub-brands, tag lines and other lower- priority marks

• Note that tag lines are not always protectable

– Don’t use for certification or collective marks (rules vary;

unpredictable)

– Consider not using in connection with goods/services which are

differently classified in different jurisdictions

– Has the designed jurisdiction implemented the necessary

legislation?

Protecting Trademarks Abroad: Madrid System vs. National...

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