EU accession to Madrid Protocol leads to changes to UK law

United Kingdom

Following the European Union's accession to the Madrid Protocol on October 1 2004, the United Kingdom has introduced the Trademarks (International Registrations Designating the European Community) Regulations 2004/2332.

As a result of accession, Community trademark applicants and proprietors can apply for international protection of their marks. Conversely, holders of international registrations can apply to the Office for Harmonization in the Internal Market (OHIM) for protection of their marks under the Community trademark system. An international registration designating the European Union has, from the date of registration or designation, the same effect as an application for a Community trademark and, if registered, the mark will have the same effect as a Community trademark registration.

The new regulations define an 'international trademark (EC)' as a trademark that is entitled to protection in the European Union under the Madrid Protocol. This new category of international trademark will take its place in Section 53 of the Trademarks Act 1994 alongside the 'international trademark (UK)' - a trademark entitled to protection in the United Kingdom under the Madrid Protocol.

The new regulations amend the provisions relating to relative grounds for refusal of registration and earlier trademarks in Sections 5 and 6 of the act so that an international trademark (EC) enjoys appropriate priority in the United Kingdom. The amendments to Section 6 also make it clear that an international trademark (EC) will enjoy the seniority of an earlier UK trademark or international trademark (UK). This means that the rights attaching to the earlier national trademark will be preserved under the international trademark (EC) even where the national mark is surrendered or allowed to lapse. There is also a consequential amendment to Section 5(3), which ensures that the "reputation" of an earlier trademark is, in the case of an international trademark (EC), its reputation across the European Union.

The Community Trademark Regulations 1996 have also been revised by the new regulations so that they apply to international trademarks (EC) in the same way as they apply to Community trademarks. The new regulations modify the 1996 regulations so that international trademarks (EC) are covered by the laws relating to:

  • groundless threats to bring infringement proceedings;

  • control of the importation of infringing goods; and

  • offences and enforcement powers concerning counterfeit goods.

Additionally, the new regulations (i) allow an application to be made to contest the seniority of an international trademark (EC), and (ii) create an offence of falsely representing a trademark as an international trademark (EC).

Other amendments to the 1996 regulations provide for the conversion of an international registration designating the European Union into an application for a trademark under the 1994 act. The OHIM has been given the role of deciding on the admissibility of conversion applications.

For background information on the European Union's accession to the Madrid Protocol, see Community marks now stepping stones to international protection and The proposed union of the Madrid and Community trademark systems.

Andrew Clay, Hammonds, London

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