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Obtaining Trademark Protection in Foreign Countries – Paris or Madrid?

| Jan 4, 2019 | IP and Technology, Trademark

In today’s global economy, businesses must be attuned not only to their trademark protections and rights in the United States, but also to protecting their trademarks in foreign countries. Through the Paris Convention and the Madrid Protocol, there are international processes of seeking and receiving international trademark protection. This blog discusses those methods and when and why each may be beneficial to your business.

Trademarks are potentially the most important aspect of a business because a trademark symbolizes the goodwill and quality of the product or service offered by a business. Just ask the owner of the Coke and Apple brands, which are protected by trademarks. A trademark serves as a source-identifier that the consuming public encounters when making a purchasing decision.[1] Oftentimes, a consumer’s decision to purchase a product or service is solely because the product or service has a certain word, symbol, design, or slogan attached to it. Trademarks can become so valuable that the business cannot risk having someone else use its mark.

In the United States, rights in a mark begin as soon as the mark is used. Once a trademark receives federal registration, not only do the actual rights in the mark broaden, but also the ability to exclude others from using the mark becomes much easier and greater. However, these expansions and protections afforded by federal registration are exclusive only to the United States. In some foreign countries, rights in a trademark only begin upon registration. For instance, in China rights in a trademark only begin upon registration; only registered trademarks may be enforced. The differences in countries around the world between when trademark rights begin and when those rights can be enforced illuminate the importance of investing in international trademark protection.

There are two main legal frameworks that govern foreign trademark registration. The Paris Convention for the Protection of Industrial Property in 1883 and its many revisions create international reciprocity and other benefits for trademark registrations. The Madrid Agreement Concerning the International Registration of Marks of 1891 and the Protocol Relating to the Madrid Agreement adopted in 1989 facilitate a type of international registration for a mark. The International Bureau of the World Intellectual Property Organization (WIPO) administers the Madrid Protocol.

The Paris Convention concerns many forms of “industrial property,” not just trademarks. The Paris Convention provides that each country who is a party to the treaty will grant the same protection to trademark registrations from another country that is also a party to the treaty. For instance, if an American business files for a trademark in France, then that American business should be able to receive the same trademark protection as a French corporation, subject to clear restrictions such as the mark is not distinctive or is against morality or public order. Furthermore, a trademark application filed by a foreign applicant directly with another country that is party to the Paris Convention exists completely independent of any trademark application that may be filed in the foreign applicant’s home country.

Another aspect of the Paris Convention includes priority rights which permit an applicant to file their regular application in their home country and then, if they apply for trademark protection in one of the member countries within six months, the application in the member country receives the same filing date as the initial filing date in the applicant’s home country.

The Madrid Protocol is different from the Paris Convention. The Madrid Protocol is the process used to file a single international trademark application that could potentially be extended to many foreign countries. The Madrid Protocol streamlines the international application process so that the Applicant may file for an international registration through their “office of origin,” basically the Trademark Office in their residing country. The international registration is based on the home country application or registration. If approved, that international registration is then the basis of the applicant’s application for trademark protection in each of the foreign countries that is designated in the initial application.

To apply for an international application through the United States Patent and Trademark Office (USPTO) using the Madrid Protocol, American businesses seeking international trademark protection must rely on either their basic, already-filed application or on a registration granted previously by the USPTO. Upon meeting certain requirements and paying a fee, the USPTO forwards the application to WIPO’s International Bureau where the application again undergoes formal examination. If WIPO approves the mark, then it will be recorded on the International Register and published in the “WIPO Gazette of International Marks.”

WIPO then notifies the Intellectual Property offices in all the countries designated by the applicant. Those specific countries conduct substantive examinations to determine the scope of the protection for the mark in their respective countries. This final substantive examination is governed by the specific laws of the designated countries and is typically completed within twelve (12) to eighteen (18) months.

The Madrid Protocol is the more cost-effective avenue for gaining international trademark protection, as compared to the country-by-country under the Paris Convention. One of the drawbacks of the Madrid Protocol however, is that by virtue of one international registration serving as the basis of the applicant’s protection in the designated countries, if the application or registration in the home county that supports the international registration is cancelled or denied, then the international registration will also be cancelled or denied. This problem doesn’t occur under the Paris Convention.

The registration process for trademarks in the United States and for international applications and registrations can be complicated and lengthy. Whether to utilize the Madrid Protocol for an international trademark application or to file an application directly with a foreign trademark office should be evaluated on a case by case basis. Any global business, however should prioritize protecting its trademarks in the most effective way possible. Even though registration (in the United States and internationally) may be costly, it would be exponentially more costly in the long run not to adequately protect trademarks from the outset in the countries where the company does business.

[1] Service marks are those marks that distinguish the source of services. For purposes of this blog, the term trademark will encompass both trademarks and service marks.