Protecting Trademarks Abroad: Madrid System vs. National Filing Directly in Foreign Jurisdiction

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Wednesday, July 17, 2019

Recorded event now available

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Program Materials

This CLE webinar will guide counsel to trademark owners regarding trademark registration strategy outside the U.S. The panel will take an in-depth look at the advantages and disadvantages of using the Madrid System and filing national applications through local counsel in the foreign jurisdiction. The panel will examine the factors that U.S. trademark applicants should consider when determining where to file and offer guidance regarding the mechanics of making such filings.

Description

Registration may be necessary or advisable to protect a trademark outside the U.S. The question often facing trademark owners is where and how to file. Trademark owners doing business outside the U.S. should consider differences in how other countries govern and administer IP rights.

The Madrid System provides a mechanism by which trademark applicants can seek protection in all Madrid System countries (almost 100 contracting parties). However, while there are some benefits, such as cost savings and multi-class registrations in countries which only allow single class applications, counsel must also be aware of the disadvantages and risks.

Risks include limitations on the identification of goods and a five-year dependency period (period of uncertainty), which may make filing directly in individual jurisdictions the better option.

After identifying each country in play, applicants must weigh the advantages and disadvantages of filing under the Madrid System as opposed to filing directly in foreign jurisdictions.

Listen as our authoritative panel examines the pros and cons of the Madrid System vs. filing directly in the foreign jurisdiction(s). The panel will explore the factors that U.S. trademark applicants must consider when determining where to file and will offer guidance on how to file.

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Outline

  1. Pros and cons of filing under the Madrid System
    1. Filings
    2. Renewals
    3. Assignments
    4. Multi-class registrations
    5. Dependency period
  2. Pros and cons of filing directly in individual countries
    1. The scope of identification of goods/services
    2. Amendments
    3. Translations
    4. Renewals
    5. Replacements
    6. Cost of local counsel
  3. Considerations for determining whether to file under the Madrid System or directly in the foreign jurisdiction(s)
  4. Guidance for making the filing determination

Benefits

The panel will review these and other key issues:

  • What factors should counsel consider when determining where to register a mark outside the U.S.?
  • What are the advantages and disadvantages of filing under the Madrid System?
  • What are the pros and cons of filing directly in foreign jurisdictions?

Faculty

James, Christine
Christine P. James
Partner
Kilpatrick Townsend & Stockton

Ms. James focuses her practice on domestic and international brand management. She helps clients determine the...  |  Read More

Moersfelder, Matthew
Matthew E. Moersfelder
Partner
Davis Wright Tremaine

Mr. Moersfelder focuses his practice on trademark, unfair competition, and copyright law. His experience includes...  |  Read More

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