International Trademarking Easier With U.S. Treaty

The process of registering trademarks in multiple countries became simpler on Nov. 2 when an international treaty administered by the World Intellectual Property Organization (WIPO) entered into force in the U.S.

Under the treaty, American trademark owners who have an underlying registration or pending application at the United States Patent and Trademark Office (USPTO) may file an international application that designates one or more of the 60 countries that are members of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. Trademark owners in other member countries also will be able to file, directly with those national offices, international applications that include a designation of the U.S.

Previously, American applicants had to file separately in each of the national or regional offices of the member countries and intergovernmental organizations where they sought to protect their trademarks, and Madrid Protocol applicants had to file separately with the USPTO. The Madrid Protocol will now allow consolidation of many of those national filings, which is expected to result in efficiency gains and significant cost savings for trademark owners.

Because the U.S. maintains commerce with so many countries, this event is expected to initiate a new period of growth for the Madrid System Concerning the International Registration of Marks. The Madrid system is governed by the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Madrid Protocol, which introduced several new features into the system with its arrival in 1996. A country may adhere to the Madrid Agreement, Madrid Protocol or both; intergovernmental organizations may adhere to the Madrid Protocol only. International registrations presently number about 400,000.

The Madrid System has experienced a relatively steady increase in membership since the adoption of the Madrid Protocol. On Dec. 25, the number of Madrid Protocol countries will reach 61, and the number of countries party to the Madrid Agreement will be 54. Other countries to join the Madrid Protocol in 2003 include the Republic of Korea, the Netherlands Antilles, Albania, Cyprus and the Islamic Republic of Iran. Croatia will join in January 2004, and the European Community also has taken political and legislative steps toward membership.

For more information on the Madrid Protocol, visit WIPO at: http://www.wipo.org/madrid/en/legal_texts/madrid_protocol.htm