IPKAT IN GENEVA - DAY ONE

The IPKat has spent the day in earnest pursuit of the secret truths of the Madrid Protocol, in the company of nearly 200 participants in the INTA - WIPO 2003 Worldwide Forum on Trademark Protection at the Noga Hilton Hotel, Geneva. The morning was devoted to two aspects of the Madrid Protocol: 1. how US applicants can most effectively use the Protocol in securing international registration for their trade marks; 2. how non-US applicants can obtain protection in the United States via the same route.

The main theme which emerged from this session was the difficulties faced by non-US applicants in consequence of designating the US as a jurisdiction for Madrid Protocol protection, thanks to the stringent registration requirements of the USPTO. In particular, US practice with regard to descriptions of goods and services for which registration is sought requires those goods and services to be precisely and narrowly detailed e.g. a claim for "clothing" would be too wide; the exact garments on which the mark is to be used must be detailed. For this same reason, a US applicant who seeks Protocol protection would be well advised to base his application on a non-US registration, which would give a wider base for the products covered by the home registration.

A further theme which emerged from the morning session was the disparity between incoming and outgoing applications. Foreign applicants for marks which are not inherently distinctive may not obtain the benefit of registration on the US Supplementary Register, while US applicants can launch a Protocol application based on a mark registered on that register.

The afternoon speakers focused on the interrelationship between the Madrid Protocol and the Community Trade Mark (CTM), as well as comparing the performance of the two systems in various hypothetical situations. The conclusion was that each system had its strengths and weaknesses, and the decision as to which system to deploy will depend on the immediate circumstances and the objectives of the trade mark applicant. Of course, there is nothing to prevent a CTM holder from seeking international registration and vice versa.

The IPKat looks forward to the session tomorrow and is off to eat his tuna and Swiss chocolate fondue.

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