Continued from Part 2

blindly filing under the Madrid Protocol. The U.S. acceded to the Madrid Protocol several years ago and without going into all the specifics about it, the Protocol allows an applicant to file one centralized electronic filing to cover a number of countries, often at a discount on the governmental filing fees. However, because each member country of the Protocol can set its own governmental filing fees, the Protocol only tends to provide discounts in more out of the way countries. It does not really provide cost savings in many of the most popular countries because those countries do not give a discount to Protocol filers. For example, it doesn’t save you money in the US or any of the European Union countries.

One other limitation to the Protocol is that an applicant has to base its foreign applications on a home application/registration. If that home application/registration is successfully challenged, then the applicant has to nationalize all of its Protocol-extended applications, often at a cost that exceeds the Protocol’s initial application savings.

Based on these limitations, we have advised clients on several occasions to forego the Protocol and instead apply to register new marks in each country of interest on a country-by-country basis. This way, if the U.S., for example, the base application for a U.S. company, is successfully challenged, the applicant does not have to nationalize its Protocol extensions. This way, each application is independent of one another and no nationalization is required. This comes up most often in the situation where a company is launching a new branding initiative in the U.S. at the same time as it is filing similar applications around the world. In that case, the applicant would not have any lead time to make sure its base application will survive as a strong Protocol base application.

With that said, there is one multi-country filing to always consider – the European Union’s application. If your company is interested in applying to register its mark in Europe, it should strongly consider filing a European Union application. It is one of the last remaining bargains. Currently, if your company files a European Union application, it costs approximately $5,300 to cover all of the member countries. If your company were to apply to register the same mark in each of the European Union’s member countries individually, it would cost approximately $50,000. As you can clearly see, using the European Union’s application is really the way to go most of the time when your company cares about protecting its mark in Europe.

Companies are often very concerned about trademark searching and they should be. However, I have found searching in multiple foreign jurisdictions to be less than ideal from a cost-effectiveness perspective and from a usefulness of results perspective. There are many negatives to conducting multiple individual country searches. They are very expensive. In addition, depending on the country, the attorneys’ practice there may not be to provide particularly specific opinions as to the availability of the desired mark.

Instead, if your company is US based and the U.S. market matters to your new mark’s business, I would suggest conducting a number of in-house internet searches. See what you find on the internet. Type your company’s proposed mark into Google, Yahoo! and a couple of other search engines. Type your company’s proposed mark as a .com and .net domain name and see what, if anything appears on those web sites.

If your searching does not locate anything on point, then I recommend conducting a full U.S. trademark search, like the type offered by Thomson Compumark or Corsearch. A full U.S. trademark search can give you a good idea if

CONTINUED ….. Part 4

Suggestions for a Successful and Affordable International Branding Campaign

by  Scott Slavick, Brinks Hofer Gilson & Lione