August 01, 2004
Intellectual Property Alerts

European Union Joins International Trademark Treaty
by Cyrus Wadia

The European Community has finally joined the Madrid Protocol. Now, trademark applicants and holders can apply for trademarks in over eighty-five countries – including the 25 EC Member States – with one simple application.

The Madrid Protocol is an international trademark treaty that allows trademark holders in member countries to file for trademark protection in any other member country throughout the world including, for example, Australia, China, Japan, Russia, Switzerland and the United States. Instead of having to file multiple applications, pay multiple fees in various currencies, and engage different lawyers or trademark agents in each foreign country, one application can be filed in the U.S. Patent & Trademark Office (PTO) to establish international trademark rights in the member countries.

The EC – the European Union’s central market entity -- was considered the last major holdout in the international trademark revolution caused by the Madrid Protocol. Although Community Trademarks were previously available, trademark applicants had to file separate Community Trademark applications and Madrid Protocol applications. Now, trademark applicants and owners will be able to obtain and protect their international trademarks in the EC, the United States, and in countries all over the world simply, quickly and affordably through a single international application under the Madrid Protocol.

The EC’s accession to the Madrid Protocol is effective October 1, 2004. On that date, the USPTO will begin accepting Madrid Protocol applications in which you can opt in for registration in the EC. The advantages and disadvantages of international registrations are unique to each company or individual and the particular mark you are trying to protect. Expert counsel in the area of international trademark law is absolutely necessary to navigate these new frontiers.

Cooper, White & Cooper LLP’s Intellectual Property Group, headed by Marcy Bergman, is here and ready to assist you. Please contact Marcy Bergman, Cyrus Wadia, Walter Hansell, or any of the attorneys in Cooper's Intellectual Property Group if you have any questions regarding trademark registration and protection, or the EC’s accession to the Madrid Protocol.

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