The Madrid Protocol

Article originally appeared in Arizona Attorney on 01/01/04

Exciting changes have arrived for Arizona companies that do business internationally.

Beginning last November, U.S. companies can file a single trademark application that covers 60 countries. Under the prior system, companies had to file separate trademark applications in each country or geographic region, resulting in large amounts of work and expense.

This change comes about as a result of the Marid Protocol Implementation Act, 15 U.S.C 1141, which made the US a member of an international treaty called the Madrid Protocol. The Protocol is a mechanism that simplifies international registration of trademarks through an "International Registration." For US companies, International Registrations are filed through the US Patent and Trademark Office and administered by the International Bureau of the World Intellectual Property Organization (WIPO).

Who can file an International Registration? Any person, company or association that is a national of the United States or has a "real" and "effective" industrial or commercial establishment or domicile in the United States is eligible to apply for it. It is not clear yet how the United States will define these standards, but, at a minimum, it would include any US citizen or any entity that has a legal presence (eg corporation, nonprofit corporation, LLC, partnership) in States. The process also allows foreign companies in Member Countries to extend their foreign-based applications or registrations into the United States.

For many companies, the Madrid Protocol will simplify the logisitics of seeking international trademark protection. However, these companies must make sophisticated strategic choices between this new option and traditional country-by-country protection. One place to begin is to examine some of the advantages and disadvantages of this new approach.

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