LaRiviere, Grubman & Payne, LLP

United States Joins The Madrid Protocol

By Susan Sory

Six years after it was signed by twenty-eight nations, the United States Senate and House passed the implementation bill agreeing to join the Madrid Protocol, the independent international trademark registration agreement. The Protocol permits a company from the United States to file an ITU application for registrations in the nations that are already members of the Protocol which would give the company the advantage of an early priority date. The trademark offices in the designated countries would process the application under that country's domestic law.

Other advantages of the Protocol include allowing the use of the English language, a ten-year registration period and extending the time within which a nation must refuse or register a mark under the Protocol to eighteen months as opposed to the previous limit of twelve months.

In the event of a change in ownership of a mark by assignment, only one recordation and payment of a single fee (using United States currency) will be required in order for such change to be recorded in all the designated countries included in the Protocol.

With the U.S. joining the Madrid Protocol, the firm can now more cost effectively obtain trademark protection for clients desiring to offer their goods for sale in the European market. Before joining the Protocol, many companies were often unable to enter that market due to the prohibitive nature of the expenses involved in obtaining foreign trademark registrations.

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