Opinion of the Economic and Social Committee on:

- the 'Proposal for a Council Decision approving the accession of the European Community to the protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989` (), and - the 'Proposal for a Council Regulation (EC) modifying Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark to give effect to the accession of the European Community to the protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989` () (97/C 89/06)

On 17 October and 2 December 1996, the Council decided to consult the Economic and Social Committee, under Article 198 of the Treaty establishing the European Community, on the above-mentioned proposals.

The Section for Industry, Commerce, Crafts and Services, which was responsible for preparing the Committee's work on the subject, adopted its opinion on 8 January 1997. The rapporteur was Mr Ataíde Ferreira.

At its 342nd Plenary Session (meeting of 29 January 1997) the Economic and Social Committee adopted the following opinion by 94 votes to one, with four abstentions.

1. Context

The present opinion discusses the proposal approving the accession of the European Community to the protocol relating to the Madrid Agreement concerning the international registration of marks (COM(96) 367 final), adopted in Madrid on 27 June 1989 (Madrid protocol), and the need to amend Council Regulation (EC) No 40/94 of 20 December 1993 (COM(96) 372 final) on the Community trade mark (the Trade Mark Regulation).

2. Accession to the Madrid protocol

2.1. The Madrid protocol is designed to solve some of the difficulties faced by certain countries in acceding to the Madrid Agreement of 14 April 1991 concerning the international registration of marks.

2.2. The Commission proposal gives a clear explanation of the changes introduced by the Madrid protocol, which may be regarded as being of general benefit to the parties concerned. The only change of any significance concerns Article 14(1)(b). This allows intergovernmental organizations to accede to the Madrid protocol if they fulfil the conditions stipulated in sub-paragraphs (i) and (ii). The European Community - on whose behalf these changes were made - fulfils both conditions.

2.3. Under Community law, accession by the Community to international agreements must be based on (a) Treaty Article 228, paragraph 2, second sentence and paragraph 3, first sub-paragraph, which give the European Community the power to enter into agreements with other states or international organizations, and (b) Treaty Article 235, which serves as the basis for common rules (in this case, the Trade Mark Regulation).

2.4. The Madrid protocol system may be summarized as follows:

2.4.1. International registration (based on either an existing trade mark or a new national or regional registration) involves one single formality, equivalent to a whole series of national or regional applications;

2.4.2. The application must be filed with the office (under the terms of Articles 2(2) and 2(3) of the Madrid protocol) of a contracting party, and the applicant must expressly indicate the contracting parties on whose territory he wishes his trade mark to be protected.

2.5. The system is simple, cost-saving and unbureaucratic. A single procedure replaces a whole series of applications which would otherwise have to be made with each national or regional office. This undoubtedly furthers international cooperation and the development of trade.

2.6. The Madrid protocol system has the added advantage of being potentially applicable in the territory of all the contracting parties to the Paris convention of 20 March 1983 on the protection of industrial property. This means that under the Madrid protocol the holders of trade marks can be granted protection for their marks in the territory of each Member State which is a party to the Paris convention.

2.7. There are good grounds for believing that the protection granted under the Madrid protocol may discourage holders of trade marks from applying for the Community trade mark to protect their industrial property ().

2.8. Furthermore, given that the holder of a Community trade mark cannot at present apply for international registration on the basis of his Community mark, it is also likely that in some cases (especially when the holders of trade marks want to start trading with Member States and non-member states), the present system may cause applicants to revert to national or regional protection, thereby seriously hampering the application of the Community Trade Mark Regulation and undermining the work of the office for harmonization in the internal market ().

2.9. In addition, the Madrid protocol and the Trade Mark Regulation regulate different aspects; the former lays down a standard procedure for applying for the registration of trade marks while the latter provides a standardized regional framework for the protection of trade marks.

2.10. Consequently, the two systems of protection are not contradictory or conflicting but actually complement each other. This means simply that the Madrid protocol allows applicants for Community trade marks and holders of Community trade marks to apply for international protection by filing an international application and enables the holders of international registrations to apply for protection for their trade marks as Community marks.

2.11. As a result of the two systems being linked, industry may benefit more easily under the Madrid protocol from the advantages of the Community trade mark and holders of Community trade marks may enjoy international protection by virtue of the same protocol. This will undoubtedly help create conditions favourable to trade between the European Community and the third countries concerned.

2.12. The Commission, which is clearly in favour of the European Community acceding to the Madrid protocol, proposes, in accordance with the terms of the protocol, that the Council President attach a declaration to the instrument of accession when depositing this instrument with the director-general of WIPO. The proposed declaration simply concerns the individual fee system pursuant to Article 8(7)(a) of the Madrid protocol, and it is this Article which the declaration addresses.

2.13. The Committee would, however, stress the consequences of Article 8(7)(a)(i) and (ii) and the fact that, as the Commission itself points out, the amount of the individual fee must be set once data indicating the savings resulting from the international procedure are available.

2.14. The Committee would also underline that, in accordance with Article 2 of the proposal, the instrument of accession must not be deposited until measures have been adopted at Community level for linking the two systems. This refers in particular to the amendments to be made to the Trade Mark Regulation.

2.15. Article 3 of the Commission proposal is fully justified. The positions of the individual Member States will be safeguarded by Article 3(2).

2.16. The Committee would, however, point out that Belgium, Luxembourg and the Netherlands have already harmonized their legislation on marks, designs and models, in the uniform Benelux law on marks. This example should be followed by all Member States, with a view to harmonized solutions in other fields. The Commission should therefore take steps towards the harmonization of national legislation on designs and models.

2.17. The Committee also emphasizes the need (and the ensuing benefits) for each Member State to accede to the Madrid protocol individually, in keeping with the undertaking made in Oporto on 2 May 1992 in the Agreement on the European Economic Area.

3. Amendment of the Trade Mark Regulation

3.1. The European Commission has also presented a proposal for a Council Regulation modifying the Trade Mark Regulation (), on the grounds that it is useful to consolidate all the provisions on the international registration of marks in a single legislative document. The Committee endorses this.

3.2. In addition, as the Commission quite rightly states, 'in principle, the rules applying to international registrations designating the European Community are the same as the rules which apply to Community trade marks`, this being the reason why 'the proposed rules contain many cross-references to other Articles of the Regulation`. This in itself justifies the inclusion of these proposed rules in the Trade Mark Regulation.

3.3. The Committee acknowledges the benefits which accession to the Madrid protocol will bring to the Community and accepts the need to enshrine all the rules in one single legislative text. The Committee's task now is to assess the proposed rules, whose EU legal basis must also be related to Treaty Article 235. It agrees with the text of the preamble setting out the reasons for accession and the need to amend the Trade Mark Regulation.

3.4. The Committee endorses the wording of Article 1 of the proposal, concerning the insertion of a title on the international registration of marks. The heading of this title is also approved.

3.5. The new Title XIII consists of 18 Articles, which form a coherent whole. The main aim - which is to make the two systems of trade mark registration compatible - is fully served.

3.6. However, the Commission proposal tends to adapt the international registration of marks regime to the old Community trade mark regime. Therefore, the solutions adopted stem on the whole from the Community Trade Mark Regulation.

3.7. Nonetheless, the key Articles proposed by the Commission should be stressed:

3.7.1. Article 140 lays down as a general rule that the Trade Mark Regulation and the different implementing regulations are applicable to international applications filed with the WIPO which designate the Community. The link between the two systems hinges on this rule.

3.7.2. Article 142(1) requires that the application be filed in a language of the office. This means that it is only possible to use a language provided for in the Madrid protocol which is also a language of the office (i.e. English or French). The Committee would stress that at this level of international law there is no point in trying to make it possible to use all the languages of the Member States.

3.8. The following provisions are wholeheartedly endorsed:

3.8.1. the possibility of claiming seniority, as provided for in Articles 34 and 35 of the Trade Mark Regulation;

3.8.2. the fact that applications for international registration are to be subject to examination as to absolute grounds for refusal in the same way as applications for Community trade marks;

3.8.3. the need for the office to draw up a Community search report;

3.8.4. the possibility for international registrations designating the European Community to be subject to opposition within a period of nine months, in accordance with the provisions of Articles 8, 42 and 43 of the Trade Mark Regulation;

3.8.5. the possibility for international trade mark applications designating the Community to be converted into national trade mark applications, as already occurs with registered Community trade marks pursuant to Articles 108 and 110 of the Trade Mark Regulation;

3.8.6. the fact that international registrations which are protected in the European Community are to be subject to the same rules on use as Community trade marks, especially with regard to periods of validity and the dates from which these periods are to run;

3.8.7. the possibility of international registrations designating the Community which have been cancelled as a result of a 'central attack` being converted into Community (though not international) applications.

3.9. With regard to Article II of the proposal, the Committee points out the need to use the three-month period between the depositing of the instrument of accession and the entry into force of the protocol to prevent any difficulties which might stem from the delayed entry into force of a legal instrument.

4. Conclusions

In the light of the foregoing remarks on the usefulness of the European Community acceding to the Madrid protocol and the modification of the methods proposed by the Commission to achieve this objective, the Committee welcomes the Commission proposals and consequently:

- endorses the accession of the European Community to the protocol relating to the Madrid agreement concerning the international registration of marks;

- endorses the addition of Title XIII to Council Regulation (EC) No 40/94;

- asks the Commission to take steps towards the harmonization of national legislation on designs and models.

Brussels, 29 January 1997.

The President of the Economic and Social Committee

Tom JENKINS

() OJ No C 293, 5. 10. 1996, p. 11.

() OJ No C 300, 10. 10. 1996, p. 11.

() The official statistics are very telling. Of all the designations applied for by holders of trade marks in the Member States, a good two-thirds have been for protection in non-member states (WIPO statistics on international trade marks for 1995).

() OJ No L 11, 14. 1. 1994.