Analysis On Madrid System For International Registration Of Marks

With the rapid development of international trade, the international protection oftrademarks has become one of the most important concerns for those nations of whichinternational trade plays a significant role in their domestic economy. Therefore, theMadrid system, which offers a “one-stop” platform to register trademarks in membercountries, has gained more and more attentions from the international community.While the Madrid system witnessed a steadily growing number of member countriesduring these years, its impact on the international community has been expandingaccordingly. Whether the United States, as the largest economy in the world, accedesto the Madrid system or how it performs obligations under the Madrid system retainsimportant meanings to member countries as well as the United States itself. Thisarticle is written from an observer’s view from a civil law country, with focus onUnited States’ accession to the Madrid system and the way in which it carried outMadrid obligations, aiming at initially providing such detailed information for theinternational trademark registrants and researchers on international trademarkprotection.Apart from the introduction and conclusion, this article is divided into fourChapters. The First Chapter explains the current legal framework for international trademark protection, the regime devised by the Madrid Agreement andimprovements made by the Madrid Protocol. It further analyzes the advantages inapplying for trademark protection in other countries through Madrid system, andcomes to the conclusion that, it is necessary for the United States to accede to theMadrid system not only because of all the conveniences brought by the system ininternational trademark applications, but also because the Madrid system is the onlyexisting worldwide platform to which the United States has access.Chapter Two explores the reasons why the United States refused to accede to theMadrid Agreement but finally became a member country of the Madrid Protocol. TheUnited States never took part in the Madrid Agreement because of contradictions withits domestic system on five aspects that the United States considered to be insuperable.They are respectively, the rigid requirement of base registration, the short time frameto review applications of extension of protections, the disproportionately low fees forthe review process, the unreasonable institution of central attack and the languagebarrier. The United States finally acceded to the Madrid Protocol since the Protocolmade improvements against the named five conflicts, but the accession was stilldelayed to2003because of its domestic political reasons.Chapter Three finds that the doctrine of adoption and use, which is thefoundation of the United States trademark system as is demanded by the Constitution,is the fundamental reason for the conflicts between the Madrid system and U.S.domestic system. By requiring international applicants to submit (i) detailedclassifications on goods and services that meet its domestic standard, and (ii)declaration of intention to use the mark along with the application of extension ofprotection, and affidavits of continued use in commerce within a certain period aftergranting the extension of protection, the United States managed to turn theregistration-based trademark protection to use-based protection.Chapter Four illustrates the special conditions that the United States values inpractice to grant or cancel extensions of protection with typical cases from the federalcourts and Trademark Trial and Appeal Board. The issues in these selected cases arisebecause of the specialty in extensions of protection. The resulting judgments and opinions are important since the issues are common and likely to appear repeatedlyand such judgments or opinions would work as guidelines or precedents in solvingsimilar problems in later disputes. By analyzing these cases, we could draw theconclusion that, within the limits of the Madrid Protocol, the United States requiresthe international applications for extensions of protection to meet the same standard itsets out for domestic applications, so that the advantages the international applicantenjoys over domestic citizens would be cut short and that the process of turningregistration-based protection to use-based protection would be accelerated.