We are in a most turbulent era in which multinational movements appear to be overtaking national events and interests. In the realm of trademarks, these movements primarily consist of the Madrid Protocol emanating out of the Madrid Agreement, the Paris Convention, the Trademark Law Treaty, and the European Community Trademark, which, taken together, have undoubtedly affected trademark practice more so than in any other developments in recent history. We are all experiencing change. The author has previously written on the genesis and workings of the European Community Trademark and the Madrid Protocol and also suggests that your refer to our firm’s website, http//www.ladas.com, [2] and other materials periodically produced by Ladas & Parry for additional information about these and other treaties and intellectual property law developments generally.

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”/“Protocol”), discussed further below, is of special importance at this time to trademark holders in the United States. The U.S. Senate Foreign Relations Committee reported favorably on the resolution for advise and consent of the Madrid Protocol treaty in November 2001, which is currently awaiting a floor vote in the Senate and implementing legislation has passed in the U.S. House and is pending expected passage by the full Senate. Upon enactment of the implementing legislation, President Bush will have a year to deposit formally the instrument of ratification with the World Intellectual Property Organization (WIPO).

Once the Protocol is in effect, a US trademark applicant, will be able to file a single trademark application with the United States Patent and Trademark Office and have that application serve as a basis for an International registration which may be extended for the same goods/services to other member states designated by the applicant. As of January 2002, 55 countries have ratified the Protocol. The Protocol will also be useful to foreign companies and individuals who wish to register their marks in the United States. However, it should be underscored that there are various aspects of this system which require experienced trademark law counsel.

Among the advantages to a US trademark owner utilizing the Protocol regime are that renewals, assignment recordals, changes of name and/or address of an International Registration may be effected by filing one document with the International Bureau. Powers of attorney will not be required, at least at the filing stage of an application, and the Protocol should result in reduced costs in the initial stages of the application process, although the costs of prosecuting in the applicant’s designated countries and are not likely to be any less than national procedure has been.

Although the Protocol is an important step toward harmonizing and streamlining trademark practice globally, knowledge of the many nuances associated with the Protocol as well as significant experience with the trademark laws, procedures and practices in other countries, is critical in assessing whether and how best to proceed with a national application on which a Protocol application will be based under the rules of the Protocol and the national practice to which the Protocol will be subjected.