Your Questions Answered: Protecting, Clearing, and Enforcing Trademarks in International Trade

On July 18, Robert Kossick and I presented a Content Enablers webinar on the administrative protection, clearance, and enforcement of trademark rights in international trade. We did not have time to get to all of the audience questions, but we wanted to make sure we addressed the relevant topics raised by participants.

In this post, we look specifically at questions about United States Customs (CBP) recordation, the Madrid System, and trademark infringement generally, answering a number of the questions here that we did not have time to answer there. 

1. Is it possible to record other intellectual property rights with U.S. Customs, like copyright?

Yes, registered and applied-for copyrights can be recorded with CBP.

2. Can I record an international trademark?

No, only a registered U.S. trademark can be recorded with CBP.

3. China is a usual suspect for trademark intellectual property theft, what other countries also present large risks?

According to CBP data for 2021 (the most recent year for which it is available), China and Hong Kong accounted for 51% of seizures. They were followed by Turkey (11%), Colombia (6%) and the Philippines (6%). However, the fact that more than a quarter (27%) of seizures originated in countries outside this top four highlights the geographic spread of counterfeiting issues.

4. Do national customs agencies have access to the Madrid System?

Trademark rights are territorial, and there is no practical reason for customs agencies to be concerned about any trademarks other than those registered in their jurisdiction. What is more, given the large number of trademarks registered in most countries, customs agencies tend to focus their enforcement activities on trademarks that have been both registered with the national trademark office and recorded with them.

5. Does the Madrid System have any value for use by an importer for its due diligence?

An international trademark registration cannot be enforced at the national level. The due diligence focus should therefore be on national trademark registrations, which can be enforced by CBP (in the case of the United States).

6. What industries are the most susceptible to trademark infringement?

According to CBP, the most commonly seized goods in 2021 were wearing apparel/accessories (30%), handbags/wallets (28%), footwear (13%), watches/jewelry (12%), and consumer electronics (5%). No industry is immune, however.

7. What are the typical fees for registering with the Madrid System?

Fees vary greatly depending on the number of countries included, as well as the number of trademark classes and other factors. For reference, fees for a Madrid application based on a one-class U.S. trademark, not in color, designating Canada, China, EU, India, and Japan are 2,482 Swiss francs. That includes a CHF 653 WIPO fee, plus CHF 1,829 in national fees. Additionally, a $100 certification fee must be paid to the USPTO as the office of origin.

8. How many countries does the Madrid System cover?

According to information provided by the World Intellectual Property Organization (WIPO), as of July 22, 2023, 130 countries were members of the Madrid System.

9. What is the difference between the Madrid System and the Hague System?

The Madrid System is for trademarks, while the Hague System concerns design patents.