Madrid Protocol

The OHIM and the Madrid Protocol

The Madrid Protocol is an essential instrument in trade mark protection around the world. It is an international registration system administered by the World Intellectual Property Organization (WIPO - http://www.wipo.org/ )

From 1 October 2004, as a consequence of the accession of the EC to the Madrid Protocol, trade mark owners will benefit from two new options:

1. Extend CTM protection internationally. A CTM application or a registered CTM can be used as the basic mark for an international application

http://www.wipo.int/madrid/en/forms/index.htm

http://oami.europa.eu/en/mark/madrid/forms.htm

http://www.wipo.int/madrid/en/fees/about_fees.html

Furthermore, the OHIM must notify the WIPO International Bureau of any relevant changes that affect the CTM during the dependency period (five years following the date of the international application).

2. Designate the European Community in an International Application

WIPO registers the international application and then electronically notifies the OHIM of the designation of the European Community.

This notification triggers an 18-month time limit within which the OHIM must notify any provisional refusal of protection based on absolute grounds or relative grounds to WIPO.

The designation of the European Community has the same effect as applying for a Community trade mark.

Examination carried out by the OHIM:

1. Immediately after reception, the OHIM automatically republishes the international registration in the CTM Bulletin in a new part M dedicated solely to international registrations (see Vademecum ).

An international application designating the EC must contain the indication of a second language, chosen from the OHIM languages (Spanish, German, English, French and Italian). If a second language is not chosen, the OHIM will object to the application and will postpone the republication until the second language is available.

The individual fee charged for an international application designating the EC is, in the case of an individual CTM, 2229 SFR (up to three classes) + 461 SFR per additional class fee. If the designation is refused, the OHIM will refund the amount corresponding to the registration fee (€850 + €150 additional class fee).

2. The seniority claims and searches are dealt with in a parallel procedure.

Seniority of prior registration can be claimed in a separate official form (MM17) to be annexed to the international application. Seniority is examined based on the documents that are provided by the applicant.

Following republication, the international application is sent for search. The search is exactly the same as for CTMs: the OHIM makes the search in the CTM register and in the international register, informing the holder of earlier CTMs and sends the designation for search in the national registers (after 2008 the national search will become optional).

3. Absolute grounds for refusal and opposition procedure.

If the holder of the international registration is not domiciled in the EC, he will be requested to appoint an EC representative. If no representative is appointed, a final refusal decision is issued by OHIM.

The first communication is sent to the holder via WIPO. Then, the communication channel is directly established between 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 decision is final, a final notification is sent to WIPO.

If there are no absolute grounds for refusal , the Office will issue a first statement of grant of protection to WIPO. This statement has only an informative effect and is transmitted to the holder before being published in the International Gazette and entered in the International Register.

Relative grounds examination:

Opposition notices may be filed between the sixth month and the ninth month following the date of republication. Oppositions filed prior to this period will be deemed to have been filed on the first day of the opposition period.

If an opposition is filed , the OHIM will verify its admissibility and then notify WIPO with a provisional refusal based on opposition. The Office will process the opposition and at the end of the opposition procedure (after appeals) will inform WIPO of its final outcome: the protection is refused or accepted for part or all goods and services.

If no opposition is filed: if a first statement of grant of protection was sent, a statement of grant of protection is notified to WIPO. If there is an objection on absolute grounds for refusal pending, the statement of grant of protection is not sent.

Third party observations:

These are possible from republication until the end of the opposition procedure, but not later than 18 months. If the Office raises serious doubts, a notice of provisional refusal is notified to WIPO. They are processed in the normal way.

4. When the international registration has been accepted for the European Community, it is published in the CTM Bulletin. The date of the second publication is the starting point from which the designation of the European Community acquires the effects of a registered Community trade mark, and is the relevant date for the five years' use period.

If the designation of the European Community fails to be accepted by OHIM it is possible to convert it into:
- trade mark applications for EU Member States,
- designations of EU Member States party to the Madrid Protocol.

Communications of the President

Sources

European Legislation

WIPO Legislation