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International Protection of Brands and Patents

Andrew J. Sherman, Partner, Dickstein Shapiro Morin and Oshinsky LLP

As a general rule, trademark rights are based on actual use and/or registration in each country. Entrepreneurs and leaders of growing companies doing business abroad can take advantage of an international system (“Madrid System”) that permits the simultaneous registration of trademarks in as many as fifty-six countries using a single, standardized application.

The Madrid System is comprised of two treaties, the Madrid Agreement Concerning the International Registration of Marks (“Madrid Agreement”) and the Madrid Protocol for the International Registration of Trademarks (“Madrid Protocol”), both administered by the World Intellectual Property Organization (“WIPO”) located in Geneva, Switzerland. On November 2, 2002, President George W. Bush signed the implementing legislation for the Madrid Protocol. For U.S. franchisors and other companies that maintain international trademark portfolios, access to the Madrid System presents an opportunity to streamline, and significantly reduce the cost of, global trademark acquisition and management.

For U.S. trademark owners in need of international trademark protection, the availability of the Madrid System, in many cases, may eliminate the need to file separate applications in each country where trademark protection is required. For example, the availability of the Madrid System will mean that a U.S. company in need of trademark protection in China, Japan, the United Kingdom and Morocco (all members of the Madrid Protocol), will simply file one standardized application in the United States Patent and Trademark Office (“USPTO”), pay one fee, and obtain a single registration covering the series of underlying national applications in each of the named countries. The resulting registration will have one registration number and one renewal date.

However, the Madrid System is not a substantive trademark law and an application filed under it does not result in a “Madrid Registration.” That is, while the registration issued under the Madrid System often is referred to as an “international registration,” it differs from registrations issued under the auspices of such collective organizations as the European Union because it is not a freestanding, supranational registration. Instead, the Madrid System provides a centralized mechanism for simultaneously obtaining, in effect, separate national registrations based either on a pending application or existing registration on file in the national trademark office of the applicant’s “home country.”

To file an application under the Madrid System, the applicant must be a “qualified owner” of either a pending application or a registration on file in the national trademark office of the applicant’s “home country.”

International Patent Rights

As a general rule, protection provided by a given patent is limited to within the country in which it was granted. For example, a patent granted in the United States would not be infringed by a company manufacturing an identical product abroad, unless or until the foreign company starts manufacturing or selling the patented product in the United States. There are limited international intellectual property rights (IPR) which may offer alternative protection to national rights. There are a number of international conventions governing IPRs including:

  • Paris Convention for the Protection of Industrial Property 1883
  • Berne Convention for the Protection of Literary and Artistic Works 1886
  • Patent Co-operation Treaty 1970 (PCT)
  • WTO – Agreement on the Trade Related aspects of Intellectual Property Rights 1994 (TRIPS)

None of these conventions establishes an international form of IPR valid in several countries. Rather the conventions try to harmonize IPR protection or simplify the application process.

  • The Paris Convention has two main principles: national treatment (i.e., foreigners from other signatory states are to be treated the same as domestic citizens so far as patent protection for inventions is concerned); and right of priority (i.e., provided the correspondent application in country B is filed within twelve month of filing in Country A, then it is backdated to the date of first filing).
  • The PCT’s aim is to reduce unnecessary effort, work and cost on the part of patent applicants. Once a single international patent application is filed at the Patent Office of a member state, this has the effect of it being filed in both the first country and all other designated states in which the applicant is interested. The home patent office transmits the international patent application to an international searching authority for a prior art search which is forwarded to all designated states. The local patent office of each designated state then continues with the application in accordance with its own normal procedures.
  • TRIPS’ aim is to narrow the gaps in the way IPR is protected around the world and covers five broad issues:
  • How basic principles of the trading system and other intellectual property agreements should be applied.
  • How to give adequate protection to IPRs.
  • How countries should enforce those rights adequately.
  • How to settle IPR disputes between members of the WTO.
  • Special transitional arrangements in less developed countries.

Within Europe, a similar system has existed under the European Patent Convention (EPO) since 1973. A single application is filed and examined by the EPO; once a patent is granted it gives the same level of legal protection as a national patent in any of the contracting states which were designated in the application. There are currently twenty-seven contracting countries with another four expected to become members in due course.

© 2006 Andrew J. Sherman. All rights reserved.

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