Scope of International Trademark Treaty Expands with US Membership

Geneva, November 4, 2003
Press Releases PR/2003/365

As of November 2, 2003, the process of registering trademarks in multiple countries has been greatly enhanced as an international treaty administered by the World Intellectual Property Organization (WIPO) entered into force in the United States of America (USA). A trademark owner who is a citizen of the USA, or has a domicile or commercial establishment in the USA, and who has an underlying registration or pending application at the United States Patent and Trademark Office (USPTO), may file an international application with the USPTO which designates one or more of the other 60 countries that are party to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol). This also means that trademark owners similarly entitled to file in the other countries party to the Madrid Protocol will be able to file, directly with those national offices, international applications which include a designation of the USA.

Prior to the entry into force of the Madrid Protocol for the USA, American applicants had to file separately in each of the national or regional offices of the countries and intergovernmental organizations where they sought to protect their trademarks, and Madrid Protocol applicants had to file separately with the USPTO. The entry into force of the Madrid Protocol will allow consolidation of many of those national filings, which will result in efficiency gains and cost savings for trademark owners. The possible accession of the European Community to the Madrid Protocol, which would link the European Community trademark system and the Madrid system, would allow even further consolidation.

As the USA maintains trade links with so many other countries throughout the world, it is expected that this event will initiate a new period of growth for the Madrid System Concerning the International Registration of Marks (Madrid system). The recent decision to include Spanish as a working language of the Madrid system, in addition to English and French, also promises to attract a wider number of countries into the system.

How the System Works

The Madrid Protocol provides a cost-effective and efficient way to protect a mark in up to 60 countries by obtaining a single international registration which has legal effect in each of the countries designated by the holder of that international registration. It is this ability to centrally acquire, maintain and manage a bundle of national or regional rights that makes the Madrid Protocol such an attractive option for business enterprises around the world.

Once an applicant files an international application with a national office, the application is forwarded to WIPO for examination. Where WIPO finds that the international application conforms to the applicable requirements, it registers the mark in the International Register, publishes data concerning the international registration in the WIPO Gazette of International Marks, sends a certificate to the holder and notifies the designated countries, which, within set time limits, must examine the notification for possible refusal on a country by country basis. The holders of existing international registrations will be able to extend the protection of those international registrations to the USA. A variety of procedures are available before WIPO to centrally manage international registrations (e.g., with regard to renewal, appointment of a representative, change in name or address, transfer of ownership, recording of licenses, limitation, renunciation or cancellation of goods and services, restriction of the holder's right of disposal, etc.).



The Madrid system is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement), which dates from 1891 and has been revised several times, and the Madrid Protocol, which came into operation in 1996 and introduced several new features into the system. A country may adhere to either the Madrid Agreement or to the Madrid Protocol or to both; intergovernmental organizations may adhere to the Madrid Protocol only. The approximate number of international registrations currently in force is 400,000.

Since the adoption of the Madrid Protocol, the Madrid System has seen a relatively steady increase in membership. On December 25, 2003 the number of countries party to the Madrid Protocol will reach 61, and the number of countries party to the Madrid Agreement will be 54. New members of the Madrid Protocol in 2003 (in order of entry into force) include: the Republic of Korea, the Netherlands (Antilles), Albania, the United States of America, Cyprus and the Islamic Republic of Iran. Croatia has deposited its instrument of accession and will become bound by the Protocol in January 2004. The European Community has taken significant political and legislative steps towards joining the Protocol (See PR 2003/358).

Marks, in particular, trademarks and service marks, are distinctive signs that identify the source and origin of certain goods or services and also serve as an indication of quality. The protection available by registering a mark ensures the exclusive right to use it to identify the owner's goods or services, or to authorize another party, usually through a license or franchise, to use it in return for payment.

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