You can sometimes save significant costs using the European Community Trade Mark or the Madrid Protocol.
If you are considering an international trademark filing program, there are two major multi-country systems you should consider instead of automatically arranging for national filings.
They are not for everyone, but in an appropriate case the cost savings can be significant.
The Community Trade Mark provides one registration for all 28 current European Union countries.
The Madrid Protocol provides a centralized filing procedure for obtaining and maintaining separate national trademark registrations in any or all of the 91 current Protocol member countries.
Community Trade Mark ("CTM")
Application. A very popular procedure is to file a simple CTM application in Alicante, Spain, either yourself or using a single EU representative. It does not require use of the mark, or a declaration of an intention to use it.
After examination for inherent registrability (but not for conflicting marks), your application is published for opposition. if it is opposed, there is a long cooling-off period during which you can settle the dispute. If it is not opposed, you will get the CTM registration, usually within 24 months, for a term of 10 years, renewable for successive 10-year terms.
Cost Saving. It has been estimated that one CTM registration covering the 28 current EU member countries would cost less than the cost of national registrations in 2 countries.
A CTM registration stands on its own but can enjoy the filing priority of a country of origin application you filed within the preceding 6 months.
A CTM registration can replace your national registrations of the same mark in EU countries for the same goods or services with the same owner.
Your administration is simplified because you file renewals, assignments, licenses and changes of name or address centrally with the CTM office in Alicante.
Your use of a mark in some EU countries may be deemed sufficient use to maintain the CTM registration for all of them.
You can use a single proceeding to sue an infringer in several EU countries.
If your CTM application is successfully attacked by by someone with a prior national or CTM right, you will have additional costs if you choose to convert your CTM application into local applications in non-affected EU countries.
You can only assign your CTM registration for the EU as a whole, not for individual countries.
Application. If your business is a national of a Protocol member country (like the U.S.), is a domiciliary of it, or has a real and effective industrial or commercial establishment in it ("Country of Origin"), you can file an international application in the Trademark Office of the Country of Origin based on one or more local trademark registrations or applications.
The international application is forwarded to the World Intellectual Property Organization ("WIPO") in Geneva, Switzerland, which issues an international registration.
At the time you apply for the international registration, or any time thereafter, you may request an extension to one or more of the other Protocol member countries or jurisdictions (which include the entire EU by way of a CTM).
Each extension country treats the extension request as a national application.
The international registration, and all extensions, are granted for a term of 10 years, renewable for successive 10 year terms, counted from the date of the international registration (not from each extension registration).
Cost Saving. The fees are complicated, but can be easily calculated online at http://www.wipo.int/madrid/en/fees/calculator.jsp. What you are saving is the fees for local counsel in each extension country, and there is no need for powers of attorney, legalizations or translations. By one estimate, if you file a basic application and apply for an international registration extended to 10 members countries, it would cost about one-third of the cost of filing separate national applications.
Each extension country must examine your application within 18 months instead of the years some routinely take, and this may give you preferential treatment in some countries.
Your administration is simplified because you file renewals, assignments, licenses and changes of name or address centrally with WIPO in Geneva.
Concerns Related to Madrid System
The international registration and all extensions are subject to central attack--if your basic application or registration falls, in whole or in part, during the first 5 years of your international registration, your international registration and all extensions are cancelled to the same extent. In that case, you may transform the extensions into local applications, but they are subject to national examination and you must appoint local counsel and pay additional filing fees.
Despite initial cost savings, a local representative will be needed if (a) there is a local office action; (b) there is a local opposition; (c) transformation is necessary or (d) there are additional local prosecution, maintenance or renewal requirements.
Local office actions having short response deadlines may be delayed in getting to you.
Opposition deadlines can be difficult to determine.
You cannot amend the mark covered by the international registration or any extensions of it.
You can only assign an international registration or an extension to businesses having a Country of Origin in a Protocol member country.
Concerns Related to U.S. Practice
Unlike most other countries, the U.S. requires use or at least a bona fide intention to use the mark in U.S. commerce, which may delay your ability to file a basic application, so direct national filings may be needed in first-to-file countries.
The U.S. requires you to specify goods or services with particularity. If the U.S. is the Country of Origin, this limits the breadth of coverage under the international registration and extensions.
Although the use of standard characters is preferred in the U.S. and covers all forms of display, other countries require a mark to be used in the registered form of display.
Since it is difficult to get registrations in the U.S., there is a greater likelihood that your international registration and all extensions will fall during the central attack period.
Regardless of centralized maintenance, owners of extensions to the U.S.are required to file a declaration of use with a specimen in the U.S. Trademark Office before the 6th and each 10th anniversary of the U.S registration (not the international registration).
Concerns Related to non-U.S. Practice
Marks registered in English in the U.S. may be used in other languages elsewhere, so an English language extension may not suffice.
You may find local counsel useful for advice about local requirements.
In appropriate situations, you can save significant costs by using these multi-country trademark systems. So, you should discuss their applicability, advantages and concerns with your legal advisor when planning the strategy for an international trademark filing program