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Madrid Protocol

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Citation Edit

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) (full-text).

Overview Edit

The "Madrid Protocol" is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application." It was adopted in Spain's capital on June 27, 1989, and entered into force on December 1, 1995. The international registration system is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO), in Geneva, Switzerland.

The protocol is one of two treaties comprising the Madrid System for international registration of trademarks. The first treaty, the 1891 Madrid Agreement, provides for the registration of trademarks in several countries through the filing of one international trademark registration with WIPO in Geneva.

The Madrid Protocol, developed because some countries had problems with the operation of the Madrid Agreement, is seen as an improvement to the system for international registration of trademarks. As a result, more and more trademark owners are using the Madrid Protocol every year to protect their trademarks in foreign countries. As of September 15, 2005, there were 66 contracting parties to the Madrid Protocol.

The Madrid Protocol is a filing treaty and not a substantive harmonization treaty. It provides a cost-effective and efficient way for trademark holders — individuals and businesses — to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. Moreover, no local agent is needed to file the application. Applications may be filed in English, French, or Spanish.

An application for international registration has the same effect as a national application for registration of the mark in each of the countries designated by the applicant. Once the trademark office in a designated country grants protection, the mark is protected just as if that office had registered it.

The Madrid Protocol also simplifies the subsequent management of the trademark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with WIPO's International Bureau.

Before the protocol was enacted, burdensome administrative requirements for the normal transfer of business assets often made it difficult for trademark owners to carry out valid assignments of their marks internationally. The protocol allows the holder of an international registration to file a single request with a single payment, in order to record the assignment of a trademark with all the member countries. Registration renewal also involves a simple, single procedural step. International registration lasts 10 years, with 10-year renewal periods.

Trademark owners may designate additional countries if they decide to seek protection in more member countries or if new countries accede to the protocol.

If the basic application — or registration upon which the international registration is based — is cancelled for any reason in the first five years, the Madrid Protocol gives the holder of the international registration the opportunity to turn the international registration into a series of national applications in each designated country. This series of applications keeps the priority date of the original international registration in each country.

United States Edit

The Madrid Protocol became effective in the United States on November 2, 2003. The Madrid Protocol Implementation Act of 2002[1] amended the Trademark Act to provide that: (1) the owner of a United States application and/or registration may seek protection of its mark in any of the countries or intergovernmental organizations party to the Madrid Protocol by submitting a single international application to the IB through the United States Patent and Trademark Office ("USPTO"); and (2) the holder of an international registration may request an extension of protection of the international registration to the United States. A notice of final rulemaking amending the Trademark Rules of Practice to incorporate the MPIA was published at 68 Fed. Reg. 55748 (Sept. 26, 2003).

The United States is party only to the Protocol, not to the Agreement.

References Edit

  1. Pub. L. 107-273, 116 Stat. 1758, 1913-21 (MPIA).

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