Community trademark: Protocol on the international registration of marks; Madrid Agreement 1989 (amend. Regulation (EC) No 40/94)

OBJECTIVE: adaptation of the legal protection afforded by the Community trade mark system, whereby a single application for registration gives undertakings protection not only in the territory of the Union but also in the countries party to the Madrid Protocol (China, Cuba, Denmark, Finland, Germany, Norway, Spain, Sweden and the United Kingdom). SUBSTANCE: This extension of the protection of trade marks has been made possible by the establishment of a link between the Community trade mark system and the international trade mark registration system of the World Intellectual Property Organization (WIPO). -The Community trade mark became fully operational on 1 April 1996 (Regulation (EC) No 40/94) and gives trade marks uniform protection throughout the territory of the EU once a single application for the registration of a Community trade mark has been made. The Office for Harmonization in the Internal Market, which has its seat at Alicante in Spain, is responsible for the administration of Community trademarks. -On 1 April 1996 the Madrid protocol concerning the international registration of marks also became operational. It provides for the international registration of marks at the International Bureau of the World Intellectual Property Organization (WIPO) at Geneva. In principle, such registration will protect a trade mark in the territory of any country or intergovernmental organization which is a contracting party to the protocol and to which reference is made in the application for international registration. To date, nine countries have become Contracting Parties: China, Cuba, Denmark, Finland, Germany, Norway, Spain, Sweden and the United Kingdom. But many others have been urged to do so (especially the EEA countries, the CEECs and the former Soviet republics with which the Community has signed association and cooperation agreements, which provide for accession to the Madrid protocol). -Single extended procedure: the system that will be installed has the advantage of being simple and enabling the holder of a trade mark to protect it in the territory of the Community and the Contracting Parties to the protocol by a single procedure (rather than having to file an application with every national or regional office of the Contracting Parties in whose territory he wishes his trade mark to be protected). The national or regional industrial property office and the International Bureau of WIPO are responsible for this procedure. -Reciprocity: If the EC accedes to the Madrid Protocol (as another proposal provides: COM(96)0367, CNS96190), applicants and holders of Community trade marks can request protection of their trade marks by filing one international application by virtue of the Madrid Protocol. Conversely, the holders of international registrations can request, by virtue of the Madrid Protocol, that their trade marks enjoy the same protection as EC trade marks. The two systems are thus complementary. �