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The Madrid Protocol and the United States: A New Road to Travel in International Trademark


By Ian Jay Kaufman[*]


Introduction

Even though it was adopted by an international assembly in June 1989, came into effect on April 1, 1996 and is currently in force in more than 50 countries, [1] the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the "Protocol") has remained tantalizingly out of reach for trademark owners in the United States. However, all signs point to the Protocol finally becoming a reality for United States trademark owners and practitioners. Although, on balance, the Protocol promises to be a positive development for U.S. and other trademark owners, its actual effects will be challenging to both trademark owners and U.S. trademark practitioners not well-versed with international trademark law. [2]


[*] Ian Jay Kaufman, a resident partner in the New York office of the multinational law firm Ladas & Parry, has written extensively on intellectual property issues. The author acknowledges the assistance of Joseph G. Walsh, Esq. and Anna Jakobsson, Esq., associates in Ladas & Parry's New York office, in the writing of this article, portions of which were first presented as part of paper by Dr. Kaufman at conferences held in New Delhi & Hyderabad, India in January 2002. Copyright Ian Jay Kaufman 2002. All Rights Reserved.
[1] See, e.g. WIPO website: http://www.wipo.org.
[2]The author has previously written on the genesis and workings of the Madrid Protocol and also suggests that your refer to our firm's website, http//www.ladas.com, for reference materials relating to the Protocol and other intellectual property matters. See, e.g. "Trademark World - Trademarks and Treaties," p. 13 (August 1989); "Trademark World--International Business Lawyer Treaties and Trademarks," p. 531 (December 1991); "The Madrid Protocol: Should the U.S. Join?," NYLJ, October 9, 1992; "The Madrid Protocol: Step Toward Harmonization," NYLJ, October 16, 1992; "How the Madrid Agreement Differs From the Protocol" NYLJ, October 23, 1992; "Modifications, Applications Can Further Backlog Agency" NYLJ, October 30, 1992; "Protocol Impact on Trademark Office and Trademark Lawyers" NYLJ, November 6, 1992; "The New Role of Intellectual Property in Commercial Transactions - Imperative Strategies for Protecting Trademark Assets: The International Market," p. 197 (John Wiley & Sons, Inc. 1994 ed.).

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© Copyright 2002 Ian J. Kaufman - Posted July 2002
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