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After a four-year battle, Congress may allow U.S. trademark owners to file a single application that would register a trademark in dozens of countries. The U.S. House of Representatives recently passed H.R. 741, a bill intended to implement the so-called Madrid Protocol. The treaty creates a system for registering marks internationally. Currently, companies must file applications in each country in which they wish to register their mark. The Madrid Protocol would allow those filing an application at the U.S. Patent and Trademark Office to check off the member countries in which they want to obtain registration. “The protocol promises to make global trademark registration more of a one-stop shopping opportunity,” said Sally Abel, the head of Fenwick & West’s trademark group. The International Trademark Association, which has lobbied for passage of the bill, says the treaty will reduce application costs and speed up trademark registration overseas. “In a lot of countries it takes many years to get a registration,” said Bruce MacPherson, ITA’s director of external relations, adding that it takes four years to get a mark cleared in Japan. “Under the Madrid Protocol it takes 18 months.” As to cost savings, ITA also says filing costs would drop from the current level of $14,000 for 10 separate applications to about $4,700. There are currently 51 signatories to the treaty, which was adopted in Madrid, Spain in 1989. The United States has not yet ratified the treaty. Congress has sought to pass implementing legislation in the past three sessions. While there has been no opposition to the bill itself, the U.S. State Department initially objected to a provision that would have given the European Community a vote in future debates over the treaty. That issue was resolved early last year when the European Community agreed not to cast a vote against the United States; the EC’s 15 member countries retain their individual voting rights. The House passed the measure last year only to see it rejected by the Senate as a result of a trademark dispute between rum manufacturers Bacardi Ltd. and Pernod Ricard. Pernod, which has a joint venture with Cuba, has contested Bacardi’s rights to the Havana Club mark in the United States. Last year the 2nd U.S. Circuit Court of Appeals upheld Bacardi’s right to the mark in the United States. The dispute is now pending before the World Trade Organization. MacPherson said Cuba was concerned that the protocol could affect U.S. law with respect to this dispute. Language has been added to the bill to clarify that it “does not affect substantive trademark law,” MacPherson said. “I’m hoping we have that issue resolved.” Rep. Howard Coble, R-N.C., who introduced the Madrid Protocol bill, told the House that passage would encourage “all parties involved in the Bacardi dispute to intensify their negotiations.” The House adopted the measure on March 14 and submitted it to the Senate Judiciary Committee. Sen. Patrick Leahy, D-Vt., introduced a similar bill in the Senate. While corporate trademark owners favor the Madrid Protocol, some attorneys are concerned that the treaty may cut back their workload. “A certain amount of international work that gets traded back and forth may be less necessary,” said Douglas Hendricks, head of Morrison & Foerster’s trademark group. Fenwick’s Abel said attorneys in Europe had similar concerns when the European Community harmonized its trademark system. An application filed in one European country now extends to all 15 member countries. “There has been some winnowing affect,” Abel said. “But there are plenty of national issues” for attorneys to handle. Hendricks said some attorneys also question whether the rigorous registration process in the United States may get watered down. Registration in a lot of countries “is almost a rubber stamp,” Hendricks said. “There is some thought we might lower our standards to match theirs and become a registration mill instead of a vetting agency.” But PTO attorney Eleanor Meltzer said such concerns are unfounded. “We’re obligated by virtue of the Paris Convention to accept U.S. applications based on foreign registration,” Meltzer said. “The fact that others may not be as stringent [in registering trademarks] has no relation to the Madrid Protocol.”

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