Central Attack Still With Us: Although the concept of "central attack" was modified to allow for the possible transformation of an International registration into a series of national applications in the designated countries in the event of a successful "central attack" on the "basic"/"home" registration, this does not dispense with the problems associated with "central attack" altogether. The transformed national applications must be filed within three months from the date on which the International registration was cancelled, and the goods and services listed in the application must have been covered by the list of goods or services contained in the original International registration. The specter of starting all over again and paying national fees in each jurisdiction make this prospect a daunting one for the applicant and dampens the ardor of many filers and potential adhering nations.

Also, the possibility of "central attack" arises in some countries in conjunction with common law rights or rights based upon prior use, which is the case in most British law countries, e.g. India, Hong Kong, Sri Lanka, Israel, Singapore and Australia. Applicants from countries recognizing such rights are more susceptible to attack from common law claims of priority.

Substantive Issues Under Respective National Jurisdictions: As national trademark practice continues even with respect to International registrations secured under the Protocol, a practitioner must be aware of the registrability and procedural issues that may arise. For example, the Protocol and the Agreement provide for the registration of marks with color as a distinctive feature by submitting a color sample of the mark with the application, but some national trademark laws either do not allow for the registration of color marks or place restrictions on the content and method of application.

Similarly, some trademark offices, such as the United States and Canada, often require very detailed specification of goods while many European and other countries allow for a much broader specification. This difference can be disadvantageous to the U.S. applicant whose International Registration cannot go beyond the scope of the goods identified in the U.S. "home" application.

Impact on the U.S. Trademark Office Renewal and Assignment Practice & Procedure: When the United States does finally adhere to the Protocol it will mean that the renewal of International registrations in the U.S. will have to follow a two-track procedure, namely, the actual renewal fees may be paid through WIPO, although it will be necessary separately to file appropriate proof of use as required with all other U.S registrations. Those registrants who renew through WIPO but do not file appropriate proof of use will have the extensions of their international registrations in these jurisdictions canceled by the local trademark offices.

The United States will also retain its maintenance requirements known as the Section 8 and 15 Affidavits, namely, those declarations which must be filed between the fifth and sixth year of registration in order, with respect to the former, to establish that the mark is still in use in commerce in the United States and, with respect to the latter, to establish that the mark is in use and that there are no pending or completed actions affecting the claim of the registrant to exclusive rights in the mark, with the result that the mark will become incontestable. Thus, holders of International registrations, which may be extended to the United States, would need to comply with such requirements directly with the USPTO. In addition, other countries have similar national requirements beyond WIPO's procedures that must be met in order to maintain an International registration in the respective jurisdiction(s).

Application and Prosecution Costs Still Must be Considered under the Protocol: The United States' accession to the Madrid Protocol will provide U.S. applicants with a less expensive alternative when applying for a trademark in a large number of jurisdictions. However, the cost savings are limited to the initial stages of the application process. The costs of prosecuting an application in the designated jurisdictions are not likely to be any less than national procedure has been, as local counsel has to be retained in the event of a refusal or an opposition proceeding. Moreover, while the application procedure is much simpler, the Protocol does not, unlike the Community Trademark system or even the Benelux trademark system, create a truly unitary system as national procedures still govern the grant and, to some extent, the maintenance of trademark rights under the Protocol.