Out-Law News

Global trade mark registration gets closer to a one-stop-shop


Trade mark owners might soon be able to file a single application that would register their trade mark in all the major international markets following the passing of a bill by the US House of Representatives to implement an agreement presently recognised in Europe and elsewhere.

International exploitation of a trade mark is covered in the so-called Madrid Agreement which dates back to 1892. Registration of a mark in one participating country gives the owner the right to file a single application for registration in any other participating country named in the application, without the need for a separate application in every country. The UK and 50 other countries did not sign the Agreement because they disagreed with some of its details.

Instead, they signed what is known as the Madrid Protocol – a variation of the original Agreement – in 1989. It means that in most countries, a single application can be filed for trade mark registration in several countries. The US remained one of the most notable opponents to both the Agreement and Protocol, meaning that businesses had to apply separately to the US for trade mark protection, significantly adding to the expense. After a four-year battle in the US Congress, it now seems that the position may change.

The new US bill is intended to implement the Madrid Protocol under which trade mark registration takes around 18 months. In countries outside the Protocol, it can take much longer.

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