The Year That Was: Madrid Protocol Milestones in 2003

Jul 2004 – Article

The Year That Was: Madrid Protocol Milestones in 2003

By P. Jay Hines

Getting to 2003 was a long and arduous trek for the International Trademark Association (INTA) and others promoting and monitoring the viability of the Madrid Protocol as an option for seeking trademark protection throughout the world. This article will not recap the full history or address the practical issues of using the Protocol, but will address the main Protocol activities of last year and their implications for the future.[1]

The key events of 2003 with respect to the Madrid Protocol were implementation by the United States, the approval of the link to the Community Trade Mark (CTM) and the addition of Spanish as a working language. All three milestones signal a rosy future for ever-expanding reliance on the treaty as means of securing international trademark protection.

US Implementation

The United States Patent and Trademark Office (USPTO) had one year from November 2, 2002, the day the US President signed the implementing legislation into law, to implement the Protocol.[2] On March 28, 2003, the USPTO issued the proposed Rules of Practice for Trademark-related Filings under the Madrid Protocol Implementation Act of 2002.[3] INTA, along with other professional organizations and individual trademark practitioners, submitted comments and a public hearing was held on May 30, 2003.

The US deposited its instrument of accession with the World Intellectual Property Organization (WIPO) by August 2, 2003, triggering implementation three months later as planned on November 2, 2003. The final rules issued September 26, 2003.[4] The new rules require that filings made to the USPTO in connection with the Protocol be transmitted electronically through the Trademark Electronic Application System (TEAS). However, the USPTO found it necessary to temporarily suspend those provisions of the rules requiring electronic transmission to insure that the electronic systems are capable of meeting the demands of the Protocol. Electronic forms for filing Madrid applications in the US are expected to be deployed within the next two to three months.

US trademark owners are approaching the Protocol with caution, not just because of the temporary need to file on paper and pay fees to WIPO separately from USPTO fees, but partially because the system is new and not fully understood and partially because, unlike the introduction of the Community Trade Mark in 1996, there is no set window with a deadline for obtaining the earliest possible filing date.

As of March 5, 2004, a little over four months after implementation, 473 international applications had been filed with the USPTO. Of these, 414 had been certified to WIPO and 58 had been rejected as incomplete or prepared in error.

In contrast, as of March 1, 2004, 970 incoming Madrid filings or requests for the extension of protection to the US had been entered into the USPTO database, with a total of 2180 filings designating the US showing in the WIPO Madrid Express database. The largest percentage, one quarter, are from Germany, with Switzerland, France, United Kingdom, Italy and Benelux following. It stands to reason that countries with the longest experience with the central filing of the Madrid system are most comfortable in invoking it.

Madrid filings through the USPTO to date generally only cover one or two classes of goods or services, 2 being the average, but there is a broad range in the number of countries being designated, from 1 to 56 with the average being 10. Those taking advantage of the Protocol in the US are not relying on registered or incontestable marks more than pending applications, and are not relying on use-based applications more than intent-to-use applications. In fact, approximately 56% are based on pending applications, with 73% of those being intent-to-use rather than use based applications. Convention priority is claimed in 17% of the outgoing applications. Of the 39% of filings based on issued registrations, 48% are incontestable. Filings based on both an application and a registration account for 5% of the filings. Thus, there is a fairly broad distribution of the types of records being used as the basis for filing.

Likewise, foreign trademark owners are generally requesting US protection in only a few classes of goods and services, the average being 3, and are designating, on average, a total of 14 countries. Foreign trademark owners using the Protocol are relying on registered marks more than pending applications with 56% based on a country of origin registration, 21 % based on a pending application and 23% based on both. Convention priority is claimed in 39.5% of the incoming applications. Finally, it appears that some foreign applicants may be seeking to consolidate their holdings via the Protocol by replacing an earlier US registration pursuant to new Section 74 of the US Trademark Act.[5]

It is expected that the use of the Protocol by US trademark owners will pick up gradually, as will foreign applicants' use of the Protocol to extend protection to the US. Eventually, the statistics pertaining to the US will likely outpace those of other Protocol members, particularly as more countries join. In 2003, Albania, Cyprus, Iran and the Republic of Korea became parties to the Madrid Protocol. Israel is preparing to join in 2004, as is the European Union, discussed below.

The Link

May of 2003 saw a resumption of activities by the Permanent Representative Committee (COREPER) on the proposals for accession of the European Community to the Protocol and on amendments to the CTM rules to make the link work. WIPO took up the matter at a meeting in September 2003.

On October 27, 2003, the European Council adopted the decision to ratify the Madrid Protocol. On February 2, 2004, the European Commission presented to the Council the draft proposals to amend the implementing Regulation of the CTM, giving effect to accession and setting the fees payable to OHIM. Discussions with Member States will be followed by a scheduled adoption on April 19, 2004. The instrument of accession should be deposited with WIPO in order that the Protocol goes into effect later this year.[6]

The European Community, similar to the US and 22 other Protocol members, will operate on the basis of an individual fee system and will have 18 months to notify WIPO of a refusal. WIPO also took steps in 2003 to prepare for the link to the CTM system. It amended the Common Regulations and the Rules to provide for the indication of a second language before the Office of the European Community, for claims of seniority and for conversion of a designation of the European Community, if the designation of the EC is refused or ceases to have effect, into a designation in any of the EU Member States.[7]

The second language to be designated by applicants requesting an extension of protection to the EC must be one of the five official languages of the Office for Harmonization in the Internal Market (OHIM), namely, English, French, German, Italian or Spanish. The second language serves as an alternative language in which third parties may file opposition or cancellation proceedings before OHIM.

When basing an application for an International Registration on a CTM application or registration, the filing with OHIM must be in one of the five noted official languages. However, if the language of the application is German or Italian, the applicant must indicate French, English or Spanish as the second language.

For the purposes of claiming the seniority of an earlier national mark in an EU Member State, WIPO will provide a separate official form (MM17) that will be attached to the international application form.

If an applicant for international registration has designated the EU and the CTM application is withdrawn, refused or ceases to have effect, it may be converted into either a national application filed directly with the Office of a Member State or a subsequent designation of that Member State under the Madrid system. The latter mechanism, which must be accomplished through OHIM, is known as "opting-back." The result is that the mark continues to retain the original date of the International Registration. Since, by this mechanism, the applicant retains the cost advantages of the Madrid system, some view the "link" as the best of all possible worlds.

The opting-back mechanism appears to be contrary to the normal effects of central attack, since conversion or transformation is not generally available with respect to countries that, due to the "safeguard clause," are governed by the Agreement. Nine current EU members are members of both the Protocol and the Agreement. If the filing designating the EU is a filing based on an application and not a registration in the country of origin, would opting-back be available in those nine countries in the case of central attack? The answer appears to lie in the future, as the Assembly of the Madrid Union is scheduled to review the safeguard clause in 2005.

The Addition of Spanish

WIPO, noting that progress had been made regarding the issue of adding Spanish as an official language of the Madrid system, issued proposed amendments to the Common Regulations on July 15, 2003 for an Assembly of the Madrid Union to be held September 22 to October 1, 2003.[8] Two alternative sets of amendments were proposed, one to place Spanish on the same footing as English, i.e., for use in connection with only the Protocol, and one for full integration of English, French and Spanish regardless of whether the international application is governed by the Protocol, the Agreement or both treaties.

The Assembly opted for the first alternative. The three languages are all to be official languages of the Protocol only. The amendments are to enter into force on April 1, 2004.[9]

The purpose, of course, is to encourage the accession of new members from Latin America. This step is important to overcoming what are considered by these countries as constitutional barriers to joining the Protocol.[10]


The year 2003 saw some major milestones that bode well for the future of the Madrid Protocol. Many have long believed that US membership would be the key to the expansion and success of the Protocol. Many also consider the link to the CTM to be the "best of all possible worlds" for approaching trademark protection in the soon to be expanded European Union. Finally, the introduction of the Spanish language as an official language of the Protocol was an essential step to the goal of establishing a truly worldwide central filing system for trademarks. For the Protocol, it was quite a year.