The Madrid Protocol Implementation Act

"I am pleased to support S. 407, legislation that, together with the treaty it implements, the Madrid Protocol, will enable American businesses to obtain international trademark protection with the filing of a single application and the payment of a single fee.

"For many businesses, a company’s trademark is its most valuable asset and as global trading and multinational businesses grow, worldwide trademark protection is becoming extremely important and desirable. Unfortunately, achieving similar protection on an international scale has always been a much more difficult task. This difficulty stems in part from the diversity among national trademark laws, as well as the prohibitive costs of filing individual registrations and seeking foreign representation in each an every country for which trademark protection is sought. As a result, American businesses and small businesses in particular are often forced to pick only a handful of countries in which to seek protection for their brand names and hope for the best in the rest of the world.

"The Madrid Protocol serves to streamline the trademark registration system in member countries throughout the world and to minimize the hurdles faced by American trademark owners in securing international protection for their marks. The legislation we are considering today will build upon those improvements in the treaty by allowing trademark owners to seek international protection with the filing of one application, in the English language, with the United States Patent and Trademark Office rather than filing separate applications in different languages with different offices throughout the world. In addition, registration of a mark in the International Register under the treaty makes subsequent management of protection much easier. Since the international registration is equivalent to a bundle of national registrations, renewals and changes of ownership can be effectuated through a single procedural step. Overall, it paves the way for the United States Patent and Trademark Office to act as a one-stop shop for international trademark protection without making substantive changes to United States trademark law. Foreign trademark owners must still meet all of the substantive requirements of United States trademark law in order to gain protection in the United States based on an international application filed under the Madrid Protocol. In short, the Madrid Protocol and S. 407 present a win-win package for American trademark owners, one that is important to all American businesses engaged in the international marketplace.

"In the past, versions of this legislation have passed unanimously out of committee in past years, and the differences between past versions and the substitute offered today are technical in nature, updating the legislation to be consistent with current rules and practice at the United States Patent and Trademark Office. The implementing legislation has always proved to be non-controversial, but the treaty itself stalled for years over administrative provisions unrelated to the substance of the Protocol, i.e., voting provisions in the treaty that would permit the European Community to obtain an extra vote. Protocol. Fortunately, a successful resolution on the voting rights issue has been reached. Recently a dispute between two claimants to a rum trademark has also slowed the treaty and floor consideration of the legislation, but the parties have told us that they have an agreement regarding the treaty which will not affect the implementing legislation.

"I am hopeful that we will be able to move this legislation to enactment in this Congress. I want to thank Chairman Leahy for his leadership with respect to this legislation, and I look forward to my colleagues’ support for it here today."

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