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Your U.S. trademark registration protects your mark only in the United States. To gain international trademark protection, you must either (1) file applications directly in the countries or regions (e.g., the European Union) where you are using or intend to use the mark, or (2) file an international application under the Madrid Protocol, which simplifies the process when filing in multiple countries. There are advantages and disadvantages to each approach.
Direct National Filing. If you file your first application for a mark in the United States, you may file related applications directly in other countries or regions and claim the U.S. filing date up to six months after filing. The only requirement is that the country/region where you are filing must have a reciprocal priority filing relationship with the U.S. via one of several treaties. Fortunately, there are very few countries that do not have such a relationship. If you miss the six-month priority window, you can still file for the mark in other countries, but you will not receive the benefit of your U.S. filing date. If you plan to use your mark in just a few countries, you may prefer to file directly in each country/region to avoid the disadvantages of filing under the Madrid Protocol (see below). However, you must hire an attorney in each country of filing (usually arranged through your U.S. law firm), and pay the legal fees associated with the prosecution of multiple applications.
The Madrid Protocol offers a streamlined approach to gaining international trademark protection and is potentially much less expensive than direct filing, particularly if you want protection in many jurisdictions. Filing under the Madrid Protocol, which must be done within six months of the U.S. filing date, allows a trademark owner to obtain basic trademark protection in any or all member states (“contracting parties”) by filing an international application with one set of fees, and make any changes (e.g., name, address, assignment) across all applicable jurisdictions. The international application extends the “basic application,” which is the original application filed, for example, in the United States, for protection to one or more member states via “designation.” The primary advantage is that you don’t have to hire local counsel to file separate applications in each country. Unfortunately, there are many disadvantages, including the following:
(1) Any change in the basic application changes the international application, including abandonment based on a refusal to register the mark, or a successful opposition of the mark. Because of the length of time it can take to find out if your U.S. application is approved and/or opposed, you will likely need to file under the Madrid Protocol before you know if it is worthwhile. If the application in the U.S. is abandoned, the international application and any corresponding national applications are immediately canceled, even if the mark would have been allowed in other countries by filing directly. For example, if your U.S. mark is refused registration based on likelihood of confusion with one or more registered U.S. marks and the application is abandoned, the international application will be canceled in all designated countries even if there is no basis for likelihood of confusion in those countries. This strict correspondence to the basic application applies for five years from the date of the international registration; thus, if your U.S. application registers but is challenged and canceled within five years from the date of the international registration, all Madrid Protocol-based registrations in other countries will also be canceled. (After five years, the international registration becomes independent of the basic application or registration.)
(2) When filing under the Madrid Protocol, your mark is still examined in each contracting country as if it were directly filed there. Therefore, there is no guarantee that the registration will be granted. Each designated country has 18 months to grant or refuse registration. Further, when Office Actions issue in other designated countries, you must hire a local attorney to respond to the Office Action, offsetting at least some of the cost savings achieved by filing under the Madrid Protocol. Further, deadlines for Office Action responses may be very short in some countries, and by the time the applicant is notified via the Madrid Protocol process, there may not be enough time to secure local counsel and respond to the Office Action.
(3) U.S. standards for identifying goods and services are much narrower than in other countries; thus, a basic registration filed in the U.S. limits the goods and services in all other countries even though a national application filed in the other countries might allow broader goods and services.
(4) Although the trademark owner files a single renewal form with the World Intellectual Property Office (WIPO) every 10 years from the international registration date, some countries, including the U.S., impose their own maintenance requirements. This increases the cost of maintaining the registration and requires that the registrant be familiar with the maintenance/renewal requirements of each designated country to avoid cancellation.
(5) Once registered, changes can never be made to a mark registered under the Madrid Protocol. This is in contrast to directly filing in a country, which often allows non-material changes to be made to registered marks via an amendment.
(6) Not all countries are parties to the Madrid Protocol. Notably, at the time of this writing Canada, Brazil, and India are not contacting parties, and you must file directly in those countries.