Monday, February 28, 2011


On 2003 United States extended the protection of international trademark throughout the Country by joining in Madrid Protocol. Madrid protocol protects trademark in foreign countries without filling separate applications in each country. It does not give the right to registration in another country but a convenient and cost effective method of filling an application for registration in another country. It helps to apply with out the help of a local agent in that country. In US a trade mark can be obtained by simply commencing the use of the trademark. But in other countries a person who applies first can get the registration. A foreign trademark can be registered in US if it is proved that there is a bono fide intention to use that trademark unlike the US trademarks which has to show the actual use of the trademark.[1] However the general criteria for the trademark registration under the USPTO are applicable. Above all, the registration should be with the bono fide intention to use the trademark in the US for commercial purpose but use of the trademark prior to the registration is not necessary[2]. Also the concept of abandonment is also applicable to foreign trade marks.

            U.S. Code Section 1141 deals with foreign trademark registration.[3] Section 1141e provides protection of foreign trademarks in United States.

Section 1141e. Extension of protection of an international registration to the United States under the Madrid Protocol[4]

 (a) In general
Subject to the provisions of section 1141h of this title, the holder of an international registration shall be entitled to the benefits of extension of protection of that international registration to the United States to the extent necessary to give effect to any provision of the Madrid Protocol.
(b) If the United States is office of origin
Where the United States Patent and Trademark Office is the office of origin for a trademark application or registration, any international registration based on such application or registration cannot be used to obtain the benefits of the Madrid Protocol in the United States.

            A foreign registration shall have the same effect as that of a principal registration. The rights and remedies of the owner of a foreign registration is the same as that of a principal owner.[5]
            USA follows the territoriality doctrine[6] for registration of foreign trademark. Section 44(e) of the Lanham Act provides the eligibility for registration of a foreign trademark in US.
·         The country in which the trademark is originally registered should provide reciprocal rights. (A reciprocal right is the right available in a country to the citizens of another country in reciprocal to the rights available for the former country citizens in the later country.)
·          The trademark should be a valid one in that country.
            Doctrine of foreign equivalents is applied to find out whether a trademark of foreign origin applied for registration is identical to a US trademark. This may happen where the foreign trademark is the translation of an existing US trademark. For avoiding this type of deceptive trademarks doctrine of foreign equivalents is used. The foreign trademarks are translated and found out whether it resembles any American trademark or it will cause confusion in a buyer who knows both languages.
            ‘Intent to use’ is the prime criteria for the registration of the trademark. In 2009 the decision of Honda Motor Co., Ltd. v. Winkelmann modified this criterion. The decision says, “. It also requires objective evidence that the applicant intended to use the mark at the time of filing the application. Mere statements of subjective intent and a foreign registration alone are insufficient.”Thus documentary evidence is needed to prove the bono fide intention to use the trademark for commercial purpose.
              ‘Country of Origin’ For the purpose of registration a country of origin is the place where the trademark is originated and registered. It does not include United States. Therefore, the term “country of origin” in Section 44(b) means some country other than the United States, and the term “person” in Section 44(b) of the Lanham Act means a person who can claim a country of origin other than the United States[7].
              44(h) of the Act gives protection of foreign trademarks against unfair competition, and the remedies provided herein for infringement of marks shall be available so far as they may be appropriate in repressing acts of unfair competition.
              Protection of trade/commercial names are also protected with out registration if they belong to nationals of the signatories to the treaty.

Well known foreign mark registration in US
              The well known foreign marks exemption provides that even though a trademark is not registered or used any where in that country it can be registered in as a foreign trademark if it is a well known trademark.US accepted this exemption and incorporated it in the Section 44 b of the Lanham Act.[8]

Registration of US trademarks in foreign countries.        
A trade mark originated in US can be registered in the countries who are parties to the conventions and treaties.  By the Madrid Protocol a US originated trademark can be registered in the reciprocal states whose trademarks can be registered in US.

Madrid Protocol
            By entering into the Madrid Protocol by the US a trademark originated and registered in US can be protected in other countries who are the signatories of the Protocol[9]. For that you need to apply for registration in the foreign country. If there is more than one foreign country then separate application should be filed for each country.

            United States is a signatory in the Paris Convention for the protection of Industrial Property of1883, the countries under the convention promises the protection of trademark registered in another country the same rights as registered in that country. Pan- American Convention, Buenos Aires Convention for the Protection of Trade Marks and Commercial Names and also a member of WTO.

Filing through USPTO

            An application for the foreign registration of a US origin trademark can be filed through USPTO. MPU, Madrid Processing Unit is the unit constituted by USPTO for considering foreign trademark registration. Then the application is send to The International Bureau of the World Intellectual Property Organization, IB. if the application for the registration is rejected then the applicant can file a review of the application to the USPTO. If the refusal of registration is due to the error or ignorance of the USPTO then the application will be reconsidered and allowed. If the application is rejected for any other reason review is not available.[10]

            The trademark application filled for registration in another country is subjected to the trademark criteria in that country.

              Thus after 2003 a foreign registered trademark (registered in a reciprocal country) can be registered in US by an application to the USPTO. Such a registered trademark has all the rights available for a US registered trade mark. But a trademark of US origin cannot apply for a foreign registration.
            According to the Madrid Protocol the trademark registration is available for the US trademarks in the signatory states of the Protocol.  However the US trademarks are subjected to the criteria for registration in the country where registration is required. 

Madrid Agreement provides more convenient procedure for the registration of trademarks in foreign countries. According to the Madrid Agreement a trademark may be registered in all member countries by filing a single trademark application that ultimately would be filed with the International Bureau in Geneva, Switzerland.[11] Nationals of countries that are not members of this convention may not obtain such "international registrations" unless they have a "real and effective industrial or commercial" establishment in, are domiciled in or are a national of a member country through which they can obtain the necessary home country registration.[12]US is not a signatory to the Madrid Agreement which limits the rights of the US nationals for registration in Foreign countries.

[1] Sec 44  (d)of the Lanham Act
[2] In Re Rath 402F.3d1207fed.Cir.2005
[5]  1141i. Effect of extension of protection(1),(2)
[6]Doctrine of territoriality is followed by a country which has its own laws to deal with the trademark registration of foreign trademarks. In order for registration of the trademark in that country the conditions prescribed  by the statute should be fulfilled.
[7]. Held in re Fisons Ltd., 197 USPQ 888 (TTAB 1978).

[8] Section 44b says, (b)

Benefits of section to persons whose country of origin is party to convention or treaty. Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this Act.   See also Article 6b of the Paris convention
[9] Now there is 75 signatories to the protocol.
[10] 1902.03(a) of the Madrid Protocol.
[12] ibid

No comments: