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You’ve read that the United States begins operations under the Madrid Protocol on Nov. 2, 2003. But what does that mean? The Madrid Protocol is an extension of the existing international trademark system based on the Madrid Agreement of 1891. It does not provide for an international trademark. But it does provide for an interim international registration, which may become a national trademark in multiple countries. The Madrid Agreement was designed only for countries that did not substantively examine trademark applications. To expand the system to include the United States, Japan, and the European Union (among others), an additional protocol was adopted in 1989 in Madrid. The Madrid Protocol, which is administered by the World Intellectual Property Organization, became operational in 1996. U.S. implementing legislation was signed into law on Nov. 2, 2002, after a number of political delays. As of Nov. 2, 2003, the owner of a pending U.S. trademark application or issued registration can file an international application in the U.S. Patent and Trademark Office. The application can designate up to 57 member countries (58 as of July 30, 2003) for protection and must have a scope no broader than the “basic” U.S. application or registration. The applicant must be a U.S. citizen, be domiciled in the United States, or have a “real and effective industrial or commercial establishment” in the United States. The PTO will send the application to WIPO, which will issue an international registration and notify the designated national trademark offices. Additional countries can also be added later. Each national office may then examine the request under its national laws. If no refusal is made within 18 months, the trademark is automatically protected in that country. If a refusal is issued, the trademark owner can respond just as with a national application. Similarly, trademark owners from other Protocol countries can extend their international registrations into the United States. A request for protection will be examined like a regular U.S. application, but under that 18-month deadline. A successful extension will result in full protection under U.S. laws. WIPO provides a centralized service for renewing all rights that result from an international registration and for recording such changes as a new owner or address. There is a single renewal date every 10 years and a single renewal fee. (Affidavits of continuing use may still be required by some national offices.) For five years, the international registration is “dependent” on the basic application or registration, meaning that the international registration will lose its effect if the basic rights are canceled or lapse. If the international registration is thus lost or limited during the five years, it can be “transformed” into national trademark applications in the designated countries. Those applications will be treated as if they were filed on the international registration date. Current Members: Western Europe — Austria, Belgium, Denmark, Finland, France, Germany, Greece, Iceland, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, Netherlands, Norway, Portugal, Spain, Sweden, Switzerland, Turkey, United Kingdom. Eastern Europe/Central Asia — Albania (as of July 30), Armenia, Belarus, Bulgaria, Czech Republic, Estonia, Georgia, Hungary, Latvia, Lithuania, FYR Macedonia, Moldova, Poland, Romania, Russian Federation, Slovakia, Slovenia, Turkmenistan, Ukraine, Yugoslavia. East Asia/Pacific — Australia, Bhutan, China, Japan, Mongolia, North Korea, Singapore, South Korea. Africa — Kenya, Lesotho, Morocco, Mozambique, Sierra Leone, Swaziland, Zambia. Caribbean — Antigua and Barbuda, Cuba. Coming Soon: United States, European Union. Notably Absent: Canada, India, Mexico, and South America. — Albert Tramposch

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