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The Trade Marks and Designs Registration Office of the European Union
You are here: Home > Trade marks > 12. Questions on the Registration of International Marks (Madrid Protocol)
12.1. What is the Madrid Protocol?
12.2. What does the link between the Madrid Protocol and the CTM system mean?
12.3. What is the role of OHIM?
12.4. What is the role of WIPO?
Chapter 12 A) International Registrations designating the EU
12.A.1. Can I designate the EU in an international application?
12.A.2. Will I need a representative?
12.A.3. How much does it cost to designate the EU in an international application?
12.A.5.What is the registration procedure?
Chapter 12 B) International applications based on a CTM
12.B.1. Can I use a CTM as the basis for an international application?
12.B.2. Will I need a representative?
12.B.3. How much does it cost to file an international application?
12.B.5. What is the procedure when the OHIM is used as the Office of Origin?
12.1. What is the Madrid Protocol?
The Madrid Protocol for the international registration of marks is a treaty administered by the International Bureau of the World Intellectual Property Organization (“WIPO”) in Geneva . It has been in operation since April 1996 and has been ratified by many countries around the world, including most European countries, the USA , Japan , Australia , China , Russia , and, in October 2004, by the European Union (EU) as such. The Madrid Protocol offers trade mark owners the possibility to have their trade marks protected in several countries by simply filing one application directly with their own national or regional trade mark office.
States Party to the Madrid Agreement and Protocol
12.2. What does the link between the Madrid Protocol and the CTM system mean?
Since the European Union's accession to the Madrid Protocol, the Community Trade Mark (“CTM”) system and the so-called Madrid system are linked - it is now possible to either file an international application based on a CTM or to designate the EU in the international application.
12.3. What is the role of OHIM?
Since the OHIM is the regional Office of the EU for the purposes of registering marks with effect across the whole of the European Union (EU), it is the point of contact for WIPO in all international application proceedings based on a CTM or designating the EC. The OHIM can act either as Office of Origin if an international application is based on a CTM or as Designated Office if the EU has been designated in an international application originating elsewhere. The OHIM's role in the international system is similar to the role played by national offices.
12.4. What is the role of WIPO?
WIPO, through its International Bureau, administers the Madrid Protocol together with the Madrid Arrangement (the two treaties forming the so-called Madrid System). When receiving an international application from an Office of Origin, it checks in particular that all the filing requirements are met and that the goods and services are correctly classified. If so, it registers the mark in the International Register and it publishes it in the International Gazette. The International Bureau then notifies the international registration to the Offices of the designated countries.
The International Bureau does not examine whether the mark as such qualifies for protection, or whether an identical or similar mark has already been registered; that is a matter for the Offices of the designated countries.
Chapter 12 A) International Registrations designating the EU
12.A.1. Can I designate the EU in an international application?
It is now possible to designate the European Union in an international application since the EU has a regional Office (the OHIM) administrating a trade mark valid across the whole territory of the EU. By designating the EC in an international application (or in a subsequent designation), one can obtain a protection with the same effects as a direct Community Trade Mark application.
12A.2. Will I need a representative?
When the EU is designated in an international application, it is generally not necessary to appoint a representative before the OHIM. Nevertheless, in the case of provisional refusal, or more generally, if the international holder needs to communicate directly with the Office (sending of documents, for example), the normal representation rules apply (see more details on the following link).
12.A.3. How much does it cost to designate the EU in an international application?
The following amounts of fees (in Swiss francs) must be paid :
|
Where the mark is an individual mark : |
|
|
For three classes |
1 111 |
|
For each additional class |
192 |
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Where the mark is a collective mark : |
|
|
For three classes |
2 070 |
|
For each additional class |
383 |
The amounts of 1 311 and 2 441 for individual and collective marks respectively are the Swiss franc equivalents to the CTM filing fees.
12.A.4. Which form may I use to designate the EU in an international application or in a subsequent designation?
WIPO MM2, MM3 or MM4 Forms available at:
http://www.wipo.int/madrid/en/forms/
12.A.5. What is the registration procedure?
When the EU is designated in an international registration, the OHIM has the right to refuse protection of a mark within 18 months of receipt of the application from WIPO. Refusal may be made on any of the grounds (absolute and relative) for which an application for registration filed directly with the OHIM might be refused.
Immediately after receipt, the OHIM automatically republishes the international registration in the CTM Bulletin in a new part M dedicated solely to international registrations (see Vademecum: http://oami.europa.eu/pdf/mark/vademecum-ctm-en.pdf).Following republication, the OHIM sends out Community search report requests for the international application in exactly the same way as for CTM applications.
The first communication is sent to the holder via WIPO. Thereafter, the communication channel is established directly between the OHIM and the holder or his representative. If the objection is not overcome, a final decision is sent to the holder. The final decision may be appealed before the Boards of Appeal. Once the appeal procedure has been exhausted and the decision is final, a final notification is sent to WIPO.
If an opposition is filed , the OHIM will verify its admissibility and then notify WIPO with a provisional refusal based on the opposition proceedings. The Office will process the opposition and at the end of the opposition procedure (after appeals) will inform WIPO of the final outcome: whether the protection applied for is refused or accepted for part or all goods and services.
If no opposition is filed , and a first statement of grant of protection has been sent, a second statement of grant of protection is notified to WIPO.
When the international registration has been accepted for the European Union, it is published in the CTM Bulletin.
If the international registration's designation of the European Union is rejected by the OHIM it is possible under Article 159 CTMR to convert it into:
Chapter 12 B) International applications based on a CTM
12.B.1 .Can I use a CTM as the basis for an international application?
Yes, since the EU has joined the Madrid Protocol, a CTM can serve as a basis for an international application. In that case, the OHIM will act as Office of Origin and will certify the identity between the CTM (applied for or registered) and the international application.
12.B.2. Will I need a representative?
It is possible to file an international application before the OHIM under the same conditions of representation as for a direct CTM (see more details on the following link).
12.B.3 .How much does it cost to file an international application?
A Euro 300 transmittal fee will have to be paid at the OHIM when filing the application.
(see more details at http://www.wipo.int/madrid/en/fees/).
The WIPO MM2 Form in English, French or Spanish (available at
http://www.wipo.int/madrid/en/forms/) or
12.B.5. What is the procedure when the OHIM is used as the Office of Origin?
The international application can be based on a registered Community trade mark or on an application for a Community trade mark. It must be filed directly at the OHIM by the trade mark owner or his representative. The CTM owner or applicant must be a national of a country of the European Union or must have a real and effective industrial or commercial establishment or domicile within the European Union.
If the international application is made in an official language of the European Union which is not a language of the Protocol, a Madrid Protocol language must be indicated (French, English or Spanish) which will be the language of the international application. If translation of the goods and services are not provided by the applicant, he must authorize the OHIM to provide them.The international application is then forwarded electronically to the International Bureau of WIPO.