On Saturday the US deposited its instrument of accession to the
Madrid Protocol with the World Intellectual Property Organization
in Geneva. This action signals its official membership to the
treaty.
Actual membership will take effect three months after the
deposit, on 2nd November, 2003, to allow time for other treaty
members to prepare for the acceptance of Madrid applications both
to and from the US.
What is it?
International exploitation of trade marks is made easier by the
Madrid Agreement Concerning the International Registration of
Marks, which dates back to 1892.
Under the Agreement, registration in one country that is a
signatory to the Agreement gives the trade mark holder the right to
file a single application which will then cover registration in any
other signatory country the person chooses.
Obtaining trade mark registration in non-signatory countries is
possible, but involves a separate application and fee to each
country's administrative trade mark office.
The UK and some other countries were unhappy with the Agreement
and joined the system in 1989 subject to qualifications contained
in what is now known as the Madrid Protocol. Until recently the US
had rejected all calls to join the system because of a dispute with
the European Union over voting rights.
US U-turn
However, on 17th October last year, the US Senate approved a
resolution paving the way for legislation to implement the treaty.
This was finally passed 2nd November, 2002. Since then, the US
Patent and Trademark Office (USPTO) has sought comment on draft
rules for the filing and processing of Madrid applications and
final rules are expected to be released in the near future.
With the deposit of the accession documents, the USPTO will
begin accepting Madrid applications on 2nd November, 2003.
"This is a great day for trademark owners," said Kathryn Barrett
Park, the president of the International Trademark Association
(INTA). "For more than a decade, INTA has worked tirelessly to
overcome obstacles to US membership. Trade mark owners will now
have the option to use the International Registration system to
protect their trade marks in all of the 59 Madrid Protocol-member
countries with only one application, in one language and with one
set of fees in a single currency."
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