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

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


Conducted on Tuesday, July 20, 2021

Recorded event now available

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Course Materials

This CLE course 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 (over 100 contracting parties). However, while there are some benefits, such as central filing and speed of examination, counsel must also be aware of the disadvantages and risks.

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

After identifying a strategic foreign filing plan, applicants must weigh the advantages and disadvantages of filing under the Madrid System instead of 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). In addition to the considerations counsel must consider when expanding into foreign jurisdictions, the panel will also explore the limitations on Madrid applications in the U.S. and offer practical guidance on how to work with clients on a suitable foreign expansion strategy.

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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. Speed of examination
    6. Financial considerations
    7. Central attack
    8. The scope of identification of goods/services
  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. Considerations for foreign clients whether to file under the Madrid System into the U.S. and the limitations imposed by the USPTO on Madrid applications
  5. 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 factors should foreign applicants and their counsel consider before choosing to file under the Madrid system to secure a registration in 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

Jacobson, Nadine
Nadine H. Jacobson

Partner
Fross Zelnick Lehrman and Zissu

Few U.S.-based lawyers know more about global trademark strategies and managing global trademark conflicts than Ms....  |  Read More

Kalamaras, Stacey
Stacey C. Kalamaras

Founding Partner
Kalamaras Law Office

Ms. Kalamaras has spent nearly 30 years working for some of the world’s most beloved brands in more than 150...  |  Read More

Kunz-Hallstein, Roberto
Roberto Kunz-Hallstein

Partner
Dr. Kunz-Hallstein Rechtsanwälte

Mr. Kunz-Hallstein practices in all fields of intellectual property, especially in trademark prosecution and...  |  Read More

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