International Trademark Planning: A Brief History of International Trademark Law
by Peter Smith
As our previous post on “Making Your Intangibles, Tangible” illustrated, trademarks function as indicators of the source and quality for both goods and services. They also serve as the prime element in advertising and generating goodwill and consumer loyalty. With e-commerce and global economies dominating most markets, it is easy to understand why utilizing and enforcing trademark protections has become a primary concern for many companies. With consumer markets becoming almost universal, how do you protect your products in foreign countries?
The answer is: you should register in every country you plan to do business. If you think that’s an unsatisfactory, inefficient, and costly answer, you’re right. A nuanced international trademark plan (and working with a trademark professional) is probably in order. While a blog post cannot provide you with a full-blown, nuanced international trademark plan, it can provide some of the necessary background and context for such a thoughtful approach. This post identifies two historical agreements affecting international trademark law-the Nice Agreement and the Madrid Agreement, explained more below-to help you to understand how the system works and what tools you might use to make international trademark protection more efficient and cost-effective.
To begin with, it is imperative to understand that trademarks are territorial. The right to use and police a mark is generally obtained though registration in a particular country, subject to that country’s legal prerequisites. Once a trademark is registered in a particular country, the protections afforded to the registered mark do not extend outside that country. For example, if you register a mark in the U.S., meeting the U.S. Patent and Trademark Office (USPTO) requirements, your mark will enjoy all of the protections afforded by the Lanham Act and any common law rights prescribed by U.S. law. However, if you use that same mark in Brazil, there are no legal protections for that mark in Brazil unless you also register the mark in Brazil, subject to Brazilian legal requirements.
With roughly 195 independent countries in the world, obtaining trademarks in each country would be an arduous and costly endeavor. To help streamline efforts to offer universal trademark protections in the burgeoning global economy, the World Intellectual Property Organization (WIPO) established the “Madrid System.”
The Madrid System is comprised of two international treaties: the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Agreement”), and the Protocol Relating to the Madrid Agreement (the “Madrid Protocol”). The Madrid Agreement was concluded in 1892 with the purpose of providing an international registration system. The treaty failed to achieve this objective, largely because of lack of support from major trademark registrants like the U.S., United Kingdom, and Japan. The Madrid Agreement also failed to set up an international system because it did not require a trademark owner to first register their mark in their home country. With no home registration upon which international registration would be based, policing a mark internationally would be logistically impossible. In order to confront the growing concerns with home registration and to leverage support from key players like the U.S., WIPO issued the Madrid Protocol in 1989.
The Madrid Protocol allows trademark owners to file an international trademark application (based on a domestic trademark registration) in a Madrid Protocol country to obtain trademark protection in all other Madrid Protocol countries. Once filed, an international application is submitted to the International Bureau at WIPO and evaluated based on international requirements. If approved, the trademark is registered for protection in countries designated in the international application (subject to such countries’ potential opposition). Once successfully registered, the trademark is treated as if it were filed in each of the foreign countries identified in the international application.
Now, before rushing to file a Madrid System application, it is important to focus on your domestic application. As mentioned above, the Madrid System application is based on the successful registration of a trademark registration in your home country. For U.S.-based companies, you will want to spend an ample amount of time working through the legal intricacies of registration and asking yourself, “What mark am I looking to register? What goods and services will be connected with the mark? Will I be filing the application based on use of the mark or intent to use?” All of these considerations are important for deciding when you want to apply and what protections you are looking for internationally.
Lastly (as if there were not enough complexity to the process), it is also necessary to determine what classification you plan to file under. In 1957, in an effort to further streamline global trademark use, WIPO adopted the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the “Nice Agreement”). This multilateral treaty was organized to adopt a common classification of goods and services for trademarks. Now consisting of 34 classifications for goods and 11 classifications for services, the Nice Agreement operates as a global system for recognizing marks and categorizing them for registration. Because your mark will be automatically linked to the goods or services you provide, it is important to determine what classification best suites your mark.
Ultimately, the trademark registration process can be a complicated and time consuming. What is most important is to focus on creating a mark and registration application that is both comprehensive and meets your business needs. After you successfully register your mark, consider whether you will be doing business internationally and, more importantly, whether you are prepared to undertake the Madrid System process of registration. Also keep in mind that if you plan to limit the use of your mark to specific countries, you may want to consider only registering your mark in those countries.
The article provided above is for general information purposes only and should not be relied on as specific legal advice. This article does not form an attorney-client relationship. If you have any questions about this article, please feel free to contact Peter J. Smith at email@example.com
This article was authored by guest blogger Ken Strocsher, a 3L at Seattle University School of Law and summer associate at the Apex Law Group.
 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, Article 1.
 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, Article 4.
 Nice Agreement, Article 1(1).
June 29, 2020