Articles

Trademarks

Madrid Protocol Implementation Act of 2002 (MPIA)

Summary

On November 2, 2002 the United States enacted the MPIA and joined fifty-seven other countries ("member countries") in adopting the Madrid Protocol. In general, the Madrid Protocol provides a system for obtaining international trademark registrations and trademark protection in selected member countries. The MPIA, which implements the Madrid Protocol in the United States, allows the owner of a U.S. trademark registration, or application for registration, to obtain trademark protection in selected member countries by submitting a single international application through the United States Patent and Trademark Office (USPTO) to the International Bureau (IB) of the World Intellectual Property Organization (WIPO).

Additional Information

The USPTO has recently published amendments to applicable rules set forth in the Code of Federal Regulations (CFR) to implement the requirements of the MPIA. The new rules take affect on November 2, 2003. For anyone who has suffered through the frustration and expense of trying to obtain a trademark registration in another country, the MPIA and the new rules promulgated by the USPTO will provide some relief. Until now, in order to file for trademark protection in a foreign country it was necessary to retain the services of an attorney in that country. The registration had to be filed in the language, and the fees had to be paid in the currency, of the respective country. The new rules of the USPTO allow a single international application covering one or more member countries to be filed through the USPTO in English and the fees paid in U.S. dollars. Over time the MPIA and associated USPTO rules should provide a significant cost savings to U.S. applicants.

In order to file an international trademark application through the USPTO the application must be based upon a U.S. trademark registration or application for registration. The international application must cover the same trademark and the same list of goods or services (or a narrower list) shown on the original registration or application on file with the USPTO and list the member countries in which extension of protection is requested. The USPTO will review the application and, if all requirements of the Madrid Protocol are met, certify the same and forward the application to the IB. The IB will also review the application for Madrid Protocol compliance. Applications that are in compliance with Madrid Protocol requirements will be registered by the IB and published in the WIPO Gazette of International Marks. The IB will issue a certificate of registration to the applicant and notify the member countries in which an extension of trademark protection is sought. Protection in the respective member countries will not be granted, however, until each such country has reviewed that trademark for compliance with its own registration requirements.

Many of the United States major trading members are member countries to the MPIA, including Japan, China, the United Kingdom and most of the European countries. Unfortunately, Canada has not adopted the Madrid Protocol and will have to make significant changes in its own trademark laws before adoption can occur. For the foreseeable future applications for trademark registrations in Canada will continue to be handled as they have in the past.

The Madrid Protocol, the MPIA and implementing rules promulgated by the USPTO should significantly improve the ease of process for, and reduce the cost of, obtaining trademark protection in the member countries.

Momkus McCluskey, LLC has an active intellectual property practice. The firm offers comprehensive legal services to its clients with regard to trademarks, copyrights, trade secrets, licensing and other related intellectual property matters. If you have questions about any of the information presented in this memorandum or regarding any other intellectual property issues please give us a call at (630) 434-0400.

Momkus McCluskey, LLC