If an organization is offering products or services under a trademark in another country or plans to enter a market abroad in the future, consideration should be given to registering your trademark in that country. There should be an inquiry as to whether the mark is currently in use in that country or how soon will use commence abroad. Many foreign countries allow 3 years after registration for use to commence (very different from the U.S.) A question that comes up time and time again with our trademark practice is: should the trademark application our organization is filing abroad be filed directly with the Trademark Office of a particular country (a national application) or should the application be filed based on our U.S. application or registration through the Madrid Protocol (international registration). This is a complex question and many factors should be considered before making a determination.
Even before the issue of how to register is discussed, there should be a dialogue about what type of trademark clearance search will be conducted. Verifying what databases or common law sources will be utilized for the search is also an important query, depending on which country or countries are being searched. Some countries have a “first to use” trademark system like the U.S. This means searching unregistered marks (common law) is important because if one party used the mark before a similar mark is filed by another party, then possibly the senior user would be the party using the mark in commerce first. Other countries have a “first to file” system and do not recognize prior use rights.
There are some drawbacks to utilizing the Madrid System, for example if you file through the Madrid Protocol, the U.S. mark is open to attack for the first five years of the life of the international registration. If the mark does not register or should it be invalidated or cancelled, then all of the extensions of protection (applications or registrations) in other countries will be cancelled as well. You should consider the strength of your trademark and whether it is a pending U.S. application or U.S. registration. If the mark is weak and still a pending application, it may not mature to a registration or be attacked in an opposition which would cause your foreign applications or registrations to be cancelled as well. If cancellation occurs, there is an opportunity to convert the international registrations to national registrations and this will preserve the priority date of the international registration, but it is a very expensive process.
Another possible drawback of a Madrid Protocol filing is that you are limited to the details of the U.S. application. The mark must be the same exact trademark, the owner must be identical, and the goods and services cannot be broadened. Since the U.S. requires specificity for the identification of goods and services, you probably will have a narrow identification extended to the foreign country when in reality the foreign country’s trademark laws allow for a broader coverage of goods and services. Lastly, you cannot assign an international registration to a non-member of the Madrid Protocol. Of course, there are multiple advantages to utilizing the Madrid System. The costs of filing the foreign trademark application will be less, there are more efficiencies in the filing of the application and for filing renewals (additional cost savings), and there is a possibility of preserving the original U.S. filing date, if you file the foreign application within six months of the U.S. filing. The protection given to a national registration and international registration (Madrid Protocol filing) is the same.
Each decision must be based on the trademark applicant’s individual circumstances, including considerations of the relative strength of the trademark, the status of whether you own a pending application or registration, your budget for international filings, the identification within your U.S. application (is it reflective of all the goods and services being offered abroad), and the importance of the market to your business and branding. For example, for your most important trademarks in your principal markets, it may be prudent to file national applications rather than international filings through the Madrid Protocol. If you have questions pertaining to trademark protection abroad and what strategy would best serve your organization, please feel free to contact our office for a courtesy telephone consultation.