Bush signs off on Madrid Protocol

President Bush has signed a Justice Department authorization bill (HR 2215) allowing the United States to implement the Madrid Protocol. The US Senate passed the advice and consent resolution for the protocol in October, thus removing the final legislative hurdle standing in the way of this important trademark treaty. The US accession had been delayed for many years by a dispute over voting rights accorded to the European Union.

Once implemented, the Madrid Protocol will allow US trademark owners to obtain international registrations for their marks based on a US application or registration. Similarly, foreign trademark owners will be able to obtain international registrations protectable in the United States based on applications or registrations in their home countries.

The Senate action on the resolution followed the completion of the implementing legislation by a joint conference committee comprising members of both houses of Congress. The US Patent and Trademark Office will now be charged with the task of promulgating procedural rules. The United States must also deposit its instrument of accession with the World Intellectual Property Organization. It is likely that these and other necessary steps will take at least another year to complete.

More than 50 countries are already party to the Madrid Protocol, including China, France, Germany, Japan, Italy, the Russian Federation, Spain, Switzerland and the United Kingdom. Others are expected to join, now that the United States has finally reached a decision.

Michael A Grow, Arent Fox Kinter Plotkin & Kahn PLLC, Washington DC

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