The Madrid Protocol makes it easier for trademark owners to file and maintain foreign trademark applications and registrations. But does it also make it easier for someone to attack those Protocol-based applications and registrations? Sometimes.
First, one must recognize that there are several different applications and registrations involved with any Protocol-based trademark. There is the "International Registration" which the International Bureau grants to the trademark owner. This International Registration is then extended to and registered in the countries (the "Contracting Parties") that the owner designates. Furthermore, the International Registration is based on a "basic application" or "basic registration" in the owner’s country of origin. The "basic application" also may mature into a registration.
There are three types of attacks against International Registrations: opposition to an extension, the "central attack" and the "invalidation" action.
Opposition to an Extension
. Once the International Bureau issues an International Registration, it notifies the Contracting Parties who each have a limited period of time (generally 18 months) to refuse to accept that International Registration in their country. If a Contracting Party timely refuses the International Registration, then the International Registration will not be extended to that Contracting Party. If a Contracting Party does not timely refuse the International Registration, then the International Registration is extended to that Contracting Party and is treated just the same as a non-Protocol registration in that country. While considering whether to refuse the International Registration, the Contracting Party may publish the fact that the trademark owner is seeking to extend the International Registration to that country. Parties are then generally given an opportunity to file an opposition, pursuant to the rules and procedures of that Contracting Party, to argue against the extension of the International Registration to that country.Central Attack.
Once an International Registration has been extended to the Contracting Parties, the most efficient type of attack is the "central attack". A central attack must be commenced within five years of the date of the International Registration, even if some extensions of that International Registration were recently granted. In a central attack, one attempts to cancel the basic application, the registration resulting therefrom, or the basic registration. The procedures and rules for the cancellation are governed by the country in which that target application or registration is located. If the cancellation is successful in whole or in part, and the decision is no longer subject to review or appeal, then the related International Registration (including all of the registrations of that International Registration in all of the Contracting Parties) is similarly cancelled therewith.To soften the consequences of a successful central attack, the Protocol gives the owner of the cancelled International Registration three months to file new non-Protocol applications for that trademark in all of the Contracting Parties where that International Registration had effect. If this "transformation" is done properly, the new applications are treated as if they had been filed on the registration date of the cancelled International Registration.
Invalidation Action.
As the central attack is relatively rare (with only 190 such cancellations during 2001), the more common type of attack against International Registrations is the invalidation action. In an invalidation, one attempts to cancel a particular Contracting Party’s registration of the International Registration. If the attack is to cover more than one Contracting Party, then separate invalidations must be brought in each of the other Contracting Parties. The invalidations are governed by each Contracting Party’s cancellation rules and procedures.In regard to all three types of attacks, each Contracting Party may have special rules and procedures for challenging Protocol-based trademarks. For example, in the rules proposed by the United States Patent and Trademark Office, one must electronically file an opposition against (or a request for extension of time to oppose) an extension of an International Registration to the United States. Unlike oppositions or extension requests pertaining to non-Protocol applications, paper filings will not be permitted. The U.S. proposed rules also provide that, unlike oppositions against non-Protocol applications, oppositions against an extension of an International Registration to the United States cannot be amended after filing to change or add to the grounds for opposition or to add to the goods or services opposed.
In conclusion, the best type of attack will depend on the circumstances. If an International Registration is in the process of being extended to the country at issue, consider opposing that extension and attempting a central attack if the basic application or basic registration is vulnerable. If the International Registration has already been extended to the country at issue but is less than five years old, consider pursuing a central attack. And if the International Registration is more than five years old, consider filing invalidation actions in the countries at issue.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
