EU-Madrid Protocol link to operate from October 1

The European Union has deposited its instrument of accession to the Madrid Protocol with the World Intellectual Property Organization (WIPO). The EU accession, which will be effective on October 1 2004, will establish the long-awaited link between the Madrid system of international trademark registration and the Community trademark system.

Once the link is in place, community trademark applications or registrations may be used as a basis for an international application. Thus, owners and applicants of Community trademarks will be able to apply for trademark protection in 64 countries without having a national basic trademark. The Office for Harmonization in the Internal Market (OHIM) will process and then forward applications and requests to the WIPO International Bureau in Geneva.

The link will also enable applicants in countries signatory to the Madrid Protocol to designate the European Union in their application. In such cases, WIPO will forward the application to the OHIM, which will examine it under the procedures applicable to Community trademark applications filed directly with the OHIM. The OHIM will notify WIPO of a provisional refusal of protection relating to the EU designation within 18 months. Where a designation of the European Union through an international registration has been refused or ceases to have effect, the international mark owner or applicant may request the conversion of the designation of the European Union into either a national trademark or a designation of a Madrid Protocol member. The international registration has to be renewed directly with the WIPO International Bureau.

Publication of Community trademark applications filed via the Madrid Protocol will be in one of the languages of the protocol only (currently English, French and Spanish), rather than the languages of the OHIM. The OHIM database will no longer contain all protected Community trademarks.

The fee to designate the European Union will be €1,875 for the first three classes and €400 per additional class. This is substantially higher than the fee for filing a Community trademark application directly with the OHIM (€975). The OHIM will reimburse part of the fee if its rejection of the application becomes final. Renewal fees for the Community trademark designation will have to be paid in addition to the renewal fees of the international registration.

In order to establish the link, the European Union adopted the following legislative measures:

• Council Regulation 1992/2003 amending the Community Trademark Regulation;
  
  
• Commission Regulation 782/2004 amending the Community Trademark Implementation Regulation; and
  
  
• Commission Regulation 781/2004 amending Regulation 2869/95 on the fees payable to the OHIM.

While the link is an important step forward for the Madrid system, it is unlikely to revolutionize trademark practice in light of the fact that (i) US practitioners are still, on the whole, unfamiliar with the Madrid system, and (ii) the importance of the EU and US markets means that mark owners will still prefer to file separate US and Community trademark applications with little difference in cost.

For a detailed discussion of the link between the Community trademark system and the Madrid system, see The proposed union of the Madrid and Community trademark systems.

Peter JA Munzinger and Karin Thanbichler, Bardehle Pagenberg Dost Altenburg Geissler, Munich