International Registrations under the Madrid Protocol

Nothing to do with trademarks: Flosser found at the top of Big Mountain, Utah

Years ago, I wrote about international trademark protection, which can be obtained either by directly filing trademark applications through foreign counsel or by filing a centralized trademark application for an International Registration, through the Madrid Protocol. These two routes for seeking international protection are different, and each has its pros and cons.

One of the chief drawbacks of filing for an International Registration is the vulnerability of a “central attack.” Because all IRs are dependent upon a basis application or registration for the first five years, a central attack on that basis application can have cascading effects; if the basis application is abandoned, then the foreign applications will be canceled, unless the applicant divorces them from the IR. Other drawbacks exist for an IR, but this is a major one.

However, this is mostly only a problem for International Registrations that are based on a trademark application. An IR can also be based on a trademark registration. While applications can present a lot of uncertainty and risk, registrations are far more stable. A pending trademark application can falter if there are similar marks already registered, if the mark is considered to be descriptive, if the applicant is identified incorrectly, if there is an issue with the goods and services description…. A trademark registration, however, is much more concrete – it will only expire if it is cancelled for one of two reasons: you forget to maintain it or a third-party attacks it.

Maintenance of a trademark registration requires regular work at very spaced-apart intervals. Initially, a registration must be renewed at the five-year mark, and then again at the ten-year mark, but after that, only every decade. Thus, as long as you calendar your deadline (and you will probably get spammed well in advance of that), you have no excuse for failing to file the renewal paperwork.

A third party can petition to cancel a trademark registration. They might do this if they have filed a trademark application of their own that is then rejected in light of your trademark registration; they want to clear the path of your mark so theirs can register. Or you may have accused them of infringing your registration and they want to have it removed. There are a number of other reasons why a registration might be subject to cancellation. But statistically, the chances of that happening are relatively small.

So the two main dangers posed against a registered trademark are small, which makes filing an International Registration based on a trademark registration fairly safe. There may still be reasons to directly file into some countries (for instance, Mexico and Canada do not participate in the Madrid Protocol), but generally, for a registered trademark, significant costs can be saved with little downside by filing for an international registration. As always, one should consult an experienced trademark attorney for advice on their particular situation. Tom can be reached for more information here.