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Print articleThe European Community Joins the Madrid Protocol
January, 2005 - A&L Goodbody’s IP Group
On 21 June 2004, the European Community (“EC”) submitted its instrument of accession to the Madrid Protocol to the World Intellectual Property Organisation (“WIPO”). The accession took effect from 1 October 2004.
The Madrid Protocol is a treaty that facilitates the international registration of trade marks (“the International Registration System”). Instead of applying to register a trade mark in every relevant country, a trade mark owner can file a single application at its National Trade Mark Office or at WIPO, designating all countries for which trade mark protection is sought, thereby significantly reducing costs and simplifying the administration.
With the accession of the EC to the Madrid Protocol, the Community Trade Mark (CTM) Registration System and the International Registration System are now linked. The CTM system allows for a trade mark registration to be effective throughout all 25 Member States of the EC by way of a single application filed at the Office of Harmonisation in the Internal Market (OHIM).
If the EC designation through an international registration is refused by OHIM or ceases to have effect, all is not lost. The owner may request its conversion into national applications or into a designation of a Member State party to the Madrid Protocol. This dual option is appealing as applicants of the CTM system can avail of it in the knowledge that if it is not possible to obtain a CTM registration, they can avoid the cost of having to prosecute multiple national applications by designating only those countries of interest.
The link between the two trade mark registration systems opens new doors for brand owners. First, internal market opportunities are now available as the EC can (from 1 October 2004) be designated (as a whole) in an international application as well as in existing international registrations. Second, international opportunities are available to CTM holders and applicants as they may file international applications based upon their CTM application or registration.
The former Internal Market Commissioner of the EU, Frits Bolkestein had welcomed the accession, believing that it would stimulate trade and innovation, create new commercial opportunities and boost integration within the EU. It should streamline trade mark registration procedures as well as reduce costs and administration, issues which all brand owners and trade mark applicants endorse and welcome.
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The Madrid Protocol is a treaty that facilitates the international registration of trade marks (“the International Registration System”). Instead of applying to register a trade mark in every relevant country, a trade mark owner can file a single application at its National Trade Mark Office or at WIPO, designating all countries for which trade mark protection is sought, thereby significantly reducing costs and simplifying the administration.
With the accession of the EC to the Madrid Protocol, the Community Trade Mark (CTM) Registration System and the International Registration System are now linked. The CTM system allows for a trade mark registration to be effective throughout all 25 Member States of the EC by way of a single application filed at the Office of Harmonisation in the Internal Market (OHIM).
If the EC designation through an international registration is refused by OHIM or ceases to have effect, all is not lost. The owner may request its conversion into national applications or into a designation of a Member State party to the Madrid Protocol. This dual option is appealing as applicants of the CTM system can avail of it in the knowledge that if it is not possible to obtain a CTM registration, they can avoid the cost of having to prosecute multiple national applications by designating only those countries of interest.
The link between the two trade mark registration systems opens new doors for brand owners. First, internal market opportunities are now available as the EC can (from 1 October 2004) be designated (as a whole) in an international application as well as in existing international registrations. Second, international opportunities are available to CTM holders and applicants as they may file international applications based upon their CTM application or registration.
The former Internal Market Commissioner of the EU, Frits Bolkestein had welcomed the accession, believing that it would stimulate trade and innovation, create new commercial opportunities and boost integration within the EU. It should streamline trade mark registration procedures as well as reduce costs and administration, issues which all brand owners and trade mark applicants endorse and welcome.
Link to article
