Trade mark costs to fall, as US signs Madrid Protocol

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."