European Union to join Madrid Protocol in 2004

European Union

After seven years of negotiations, the EU Council of Ministers has approved accession to the Madrid Protocol, thus linking the international trademark registration system with the Community trademark system. The council also approved a regulation making the necessary changes to the Community Trademark Regulation. Membership is likely to take effect in late 2004.

This link will enable applicants for and owners of a Community trademark to protect their mark in all 61 member states of the Madrid Protocol through a single procedure. It will also enable international applicants to designate and owners to extend their registration to cover the whole of the European Union (25 countries as of May 1 2004) through a single application. The combination will also amplify the respective advantages of each system, particularly by reducing the costs of international protection and making administration easier.

Some particularities are worth noting:

  • Where the EU designation of an international registration is refused or ceases to have effect, the 'opting back' clause will allow the conversion of the application into one or several national applications (designating one or several EU member states), provided that the member states designated are members of the Madrid Protocol or Agreement.

  • The European Union has opted for an individual fee system instead of sharing in the revenue produced by the supplementary and complementary fees. These individual fees will be €1,875 for a single trademark in up to three classes and €400 for each additional class.

  • The period for the refusal of an international registration designating the European Union will be 18 months instead of one year as specified in the Madrid Protocol.

  • An international application must be filed in one of the five official languages of the Office for Harmonization in the Internal Market (ie, English, French, German, Italian or Spanish). However, if this language is either German or Italian, which are not official languages of the Madrid Protocol, the applicant must indicate one of the other three languages as its second language.

It is hoped that the new link will encourage exchanges with other countries and create new commercial opportunities.

Friederike Bahr, Beiten Burkhardt Goerdeler, Munich

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