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International Trademark Protection and Registration

If your business reaches outside the U.S., as most internet-based business do, filing international trademark applications can determine whether you are the Trademark Owner or an infringer of the rights of another.  Trademarks must be filed in each country in which you seek protection.  However there is a single application that can cover the European Union called a Community Trademark (CTM) described below.  There are a number of international treaties that make such filings cost effective and relatively easy to manage.  They include the Madrid Agreement and Madrid Protocol, and the Paris Convention.

What is the Madrid Protocol?
The Madrid Protocol is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application.” Madrid Protocol applications may be filed by a U.S. attorney through the USPTO, without need for an attorney in each international country.  This may result in a substantial savings on the cost of protecting your trademark internationally.

The Madrid Protocol allows the owner of a application or registration in a member country (the “home” application or registration) to obtain an International Registration (IR) designating as many member countries as it chooses by filing one application in one language, with the home application or registration as the basis for the IR. The mark is examined in each country designated and, if it is not rejected in a country, that country becomes part of the IR.

As of April 2013, 89 countries have joined the Madrid Protocol.

They are: Albania, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Egypt, Estonia, European Community, Finland, France, Georgia, Germany, Ghana, Greece, Hungary, Iceland, India, Iran (Islamic Republic of), Ireland, Israel, Italy, Japan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Mexico, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, Norway, Oman, Poland, Portugal, Republic of Korea, Romania, Russian Federation, San Marino, Sao Tome and Principe, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, The former Yugoslav Republic of Macedonia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam, and Zambia.

These countries are called “Contracting Parties.” A current list of the Contracting Parties is available online at the World Intellectual Property Organization (WIPO) website:
https://www.wipo.int/treaties/en/registration/madrid_protocol/

What is a Community Trademark (CTM)?

The Community Trade Mark (CTM) system offers trademark owners protection throughout the European Union (EU) with one application. If successful, this application results in a CTM registration throughout the EU.

What countries are covered by at CTM Registration?
Austria, Benelux (Belgium, the Netherlands & Luxembourg), Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.

Comparing a CTM to a Madrid International Registration – What’s the difference?
The CTM is a  single registration creates a single unified right throughout the European Union. The trademark that is the subject of a CTM application must be registrable in all EU Member States.  If one Member State finds grounds for rejection, the mark will not be able to be registered as a CTM.  However, the applicant may convert the CTM application to national applications in each Member State in many cases.

A Madrid Protocol application creates rights in those member countries that grant protection through registration. This is called an “International Registration” or “IR”. Even if the IR application is refused protection in any designated country, the application can proceed to registration in the remaining designated countries.

There are many other technical differences, which is why it is important to have an experienced trademark counsel prepare these applications on your behalf.

What is the Paris Convention?
The Paris Convention is an international treaty that allows a trademark applicant the right to claim its U.S. trademark application filing date in subsequently filed applications in other Paris Convention member countries, if those applications are filed within six months.  It is the oldest major international treaty for intellectual property protection.

There are as of March 27, 2013 170 member countries, a current list of which is available on the WIPO web site: https://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=2

These countries include: Albania, Algeria, Andorra, Angola, Antigua and Barbuda, Argentina, Armenia, Australia, Austria, Azerbaijan, Bahamas, Bahrain, Bangladesh, Barbados, Belarus, Belgium, Belize, Benin, Bhutan, Bolivia, Bosnia and Herzegovina, Botswana, Brazil, Brunei Darussalem, Bulgaria, Burkina-Faso, Burundi, Cambodia, Cameroon, Canada, Central African Republic, Chad, Chile, China, Colombia, Comoros, Congo, Congo (Dem Republic), Costa Rica, Croatia, Cuba, Cyprus, Czech, Denmark, Djibouti, Dominica, Dominican Republic, Ecuador, Egypt, El Salvador, Equatorial, Guinea, Estonia, Finland, France, Gabon, Gambia, Georgia, Germany, Ghana, Greece, Grenada, Guatemala, Guinea, Guinea-Bissau, Guyana, Haiti, Holy See (Vatican), Honduras, Hungary, Iceland, India, Indonesia, Iran, Iraq, Ireland, Israel, Italy, Ivory Coast, Jamaica, Japan, Jordan, Kazakhstan, Kenya, Korea, (North) Korea, Kyrgyzstan, Laos, Latvia, Lebanon, Lesotho, Liberia, Libya, Liechtenstein, Lithuania, Luxembourg, Macedonia, Madagascar, Malawi, Malaysia, Mali, Malta, Mauritania, Mauritius, Mexico, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Nepal, Netherlands, New Zealand, Nicaragua, Niger, Nigeria, Norway, Oman, Pakistan, Panama, Papua New Guinea, Paraguay, Peru, Philippines, Poland, Portugal, Qatar, Romania, Russian Federation, Rwanda, Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, San Marino, Sao Tome and Principe, Saudi Arabia, Senegal, Serbia, Seychelles, Sierra Leone, Singapore, Slovakia, Slovenia, South Africa, Spain, Sri Lanka, Sudan, Suriname, Swaziland, Sweden, Switzerland, Syria, Tajikistan, Tanzania, Thailand, Togo, Tonga, Trinidad and Tobago, Tunisia, Turkey, Turkmenistan, Uganda, Ukraine, United Arab Emirates, United Kingdom, United States of America, Uruguay, Uzbekistan, Venezuela, Vietnam, Yemen, Zambia, Zimbabwe.

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