Proposal for a Council Regulation (EC) amending 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 (96/C 300/09) COM(96) 372 final - 96/0198(CNS)

(Submitted by the Commission on 25 July 1996) THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Community, and in particular Article 235 thereof,

Having regard to the proposal from the European Commission,

Having regard to the opinion of the European Parliament,

Having regard to the opinion of the Economic and Social Committee,

Whereas Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (1) (the 'Community trade mark Regulation`) which is based on Article 235 of the Treaty, is designed to create a market which functions properly and offers conditions which are similar to those obtaining in a national market; wheras in order to create a market of this kind and make it increasingly a single market, the said Regulation created the Community trade mark system whereby undertakings can by means of one procedural system obtain Community trade marks to which uniform protection is given and which produce their efects throughout the entire area of the European Community;

Whereas the Diplomatic Conference for the conclusion of a Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted the Protocol relating to the Madrid Agreement concerning the international registration of marks (hereafter referred to as 'the Madrid Protocol`) on 27 June 1989, at Madrid;

Whereas the Madrid Protocol was adopted in order to introduce certain new features into the system of the international registration of marks existing under the Madrid Agreement concerning the international registration of marks of 14 April 1891, as amended (hereafter referred to as 'the Madrid Agreement`) (2);

Whereas as compared to the Madrid Agreement, the Madrid Protocol introduced, in its Article 14, as one of the main innovations the possibility that an intergovernmental organization which has a regional office for the purpose of registering marks with effect in the territory of the organization may become party to the Madrid Protocol;

Whereas the Madrid Protocol has entered into force on 1 December 1995 and has become operational on 1 April 1996 and the Community trade mark system has also become operational on the latter date;

Whereas the Community trade mark system and the international registration system as established by the Madrid Protocol are complementary; whereas in order to enable firms to profit from the advantages of the Community trade mark through the Madrid Protocol and vice versa, it is necessary to allow Community trade mark applicants and holders of such trade marks to apply for international protection of their trade marks through the filing of an international application under the Madrid Protocol, and, conversely, holders of international registrations under the Madrid Protocol to apply for protection of their trade marks under the Community trade mark system;

Whereas the establishment of a link between the Community trade mark system and the international registration system under the Madrid Protocol would promote a harmonious development of economic activities, will eliminate distortions of competition, will be cost efficient and will increase the level of integration and functioning of the internal market; whereas, therefore, the accession of the Community to the Madrid Protocol is necessary in order for the Community trade mark system to become more attractive;

Whereas, for the above reasons, the Council, acting on a proposal from the Commission (1), approved the Madrid Protocol and authorized the President of the Council to deposit the instrument of accession with the Director-General of the World Intellectual Property Organization (WIPO) as from the date on which the Council has adopted the measures which are necessary to give effect to the accession of the European Community to the Madrid Protocol; whereas this Regulation contains these measures;

Whereas these measures shall be incorporated in the Community trade mark Regulation through the inclusion of a new title on 'International registration of marks`; whereas for this reason, the legal basis of this proposal must be the same as the legal basis of the Community trade mark Regulation, i.e. Article 235 of the Treaty;

Whereas it is necessary to provide for rules applying to the filing of an international application at the International Bureau of WIPO through the intermediary of the Office for Harmonization in the Internal Market (trade marks and designs) (the 'Harmonization Office`);

Whereas the rules and procedures relating to international registrations designating the European Community shall, in principle, be the same as the rules and procedures which apply to Community trade mark applications and the protection of Community trade marks; whereas according to this principle, international registrations designating the European Community shall be subject to examination as to absolute grounds for refusal, searches in the Register of Community trade marks and the registers of trade marks of those Member States which have informed the Harmonization Office of their decision to operate such a search and shall be subject to opposition in the same way as published Community trade marks; whereas international registrations designating the European Community shall be subject to the same rules on use and invalidation as Community trade marks; whereas such international registrations may be converted into national trade mark applications or into territorial extensions to Member States which are party to the Madrid Protocol or the Madrid Agreement where such international registrations are refused or cease to have effect,

HAS ADOPTED THIS REGULATION:

Article 1

Regulation (EC) No 40/94 on the Community trade mark shall be amended as follows.

(a) the following title shall be inserted after Title XII:

'TITLE XIII INTERNATIONAL REGISTRATION OF MARKS SECTION 1 GENERAL PROVISIONS Article 140 Application of provisions Unless otherwise specified in this title or in the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (herafter referred to as "the Madrid Protocol"), and the Regulations adopted under the Madrid Protocol, this Regulation and any regulations implementing this Regulation adopted pursuant to Article 159 shall apply mutatis mutandis to applications for international registrations under the Madrid Protocol (hereafter referred to as "international applications") based on an application for a Community trade mark or on a Community trade mark and to registrations of marks in the international register maintained by the International Bureau of the World Intellectual Property Organization (hereafter referred to as "international registrations" and "the International Bureau", respectively) designating the European Community.

SECTION 2

INTERNATIONAL REGISTRATION ON THE BASIS OF APPLICATIONS FOR A COMMUNITY TRADE MARK AND OF COMMUNITY TRADE MARKS

Article 141

Filing of an international application

1. International applications pursuant to Article 3 of the Madrid Protocol based on an application for a Community trade mark or on a Community trade mark shall be filed at the Office.

2. Where an international registration is requested based on a Community trade mark and the international application is filed before the registration of the mark as a Community trade mark, the international application shall be deemed to have been received on the date of registration of the Community trade mark.

Article 142

Form and contents of the international application

1. The international application may be filed in any of the languages allowed under the Madrid Protocol, provided that it is a language of the Office. The language of the international application shall be the language of the proceedings before the Office.

2. The filing of an international application shall be subject to the payment of a fee to the Office. In the cases referred to in Article 141 (2) the fee shall be due on the date of registration. The application shall be deemed not to have been filed until the required fee has been paid.

3. The international application must comply with the conditions laid down in the Implementing Regulation.

Article 143

Recordal in the files and in the register

1. The date and number of an international registration based on a Community trade mark application, shall be recorded in the files of that application. When the application results in a Community trade mark, the date and number of the international registration shall be entered in the register.

2. The date and number of an international registration based on a Community trade mark shall be entered in the register.

Article 144

Request for territorial extension subsequent to the international registration

A request for territorial extension made subsequently to the international registration pursuant to Article 3 ter (2) of the Madrid Protocol may be filed through the intermediary of the Office. The request must be filed in the language of the international application.

Article 145

International fees

Any fees payable to the International Bureau under the Madrid Protocol shall be paid direct to the International Bureau.

SECTION 3

INTERNATIONAL REGISTRATIONS DESIG- NATING THE EUROPEAN COMMUNITY

Article 146

Effects of international registrations designating the European Community

1. An international registration designating the European Community shall, from the date of its registration pursuant to Article 3 (4) of the Madrid Protocol or from the date of the subsequent designation of the European Community pursuant to Article 3 ter (2) of the Madrid Protocol, have the same effect as an application for a Community trade mark.

2. If no refusal has been notified in accordance with Article 5 (1) and (2) of the Madrid Protocol or if any such refusal has been withdrawn, the international registration of a mark designating the European Community shall, from the date referred to in paragraph 1, have the same effect as the registration of a mark as a Community trade mark.

3. For the purposes of applying Article 9 (3), publication of the particulars of the international registration designating the European Community pursuant to Article 147 (1) shall take the place of publication of a Community trade mark application, and publication pursuant to Article 147 (2) shall take the place of publication of the registration of a Community trade mark.

Article 147

Publication

1. The Office shall publish the date of registration of a mark designating the European Community pursuant to Article 3 (4) of the Madrid Protocol or the date of the subsequent designation of the European Community pursuant to Article 3 ter (2) of the Madrid Protocol, the number of the international registration, and the date of publication of such registration in the Gazette published by the International Bureau.

2. If no refusal of protection of an international registration designating the European Community has been notified in accordance with Article 5 (1) and (2) of the Madrid Protocol or if any such refusal has been withdrawn, the Office shall publish this fact, together with the number of the international registration and, where applicable, the date of publication of such registration in the Gazette published by the International Bureau.

Article 148

Seniority

The applicant for or the holder of an international registration designating the European Community may claim, in the international application or direct before the Office, the seniority of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, as provided for in Article 34 and 35.

Article 149

Examination as to absolute grounds for refusal

1. International registrations designating the European Community shall be subject to examination as to absolute grounds for refusal in the same way as applications for Community trade marks.

2. Protection of an international registration shall not be refused before the holder of the international registration has been allowed the opportunity to renounce or limit the protection in respect of the European Community or of submitting his observations.

3. Refusal of protection shall take the place of refusal of a Community trade mark application.

4. Where protection of an international registration is refused by a final decision under this Article or where the holder of the international registration has renounced the protection in respect of the European Community pursuant to paragraph 2, the Office shall refund the holder of the international registration a part of the individual fee to be laid down in the Implementing Regulation.

Article 150

Search

1. Once the Office has received notification of an international registration designating the European Community, it shall draw up a Community search report as provided for in Article 39 (1).

2. As soon as the Office has received notification of an international registration designating the European Community, the Office shall transmit a copy thereof to the central industrial property office of each Member State as provided for in Article 39 (2).

3. Article 39 (3), (4) and (5) shall apply mutatis mutandis.

4. The Office shall inform the proprietors of any earlier Community trade marks or Community trade mark applications cited in the Community search report of the publication of the international registration designating the European Community as provided for in Article 147 (1).

Article 151

Opposition

1. International registrations designating the European Community shall be subject to opposition in the same way as published Community trade mark applications.

2. The period within which notice of opposition must be filed shall be nine months following the date of the publication pursuant to Article 147 (1). The opposition shall not be treated as duly entered until the opposition fee has been paid.

3. Refusal of protection shall take the place of refusal of a Community trade mark application.

4. Where protection of an international registration is refused by a final decision under this Article or where the holder of the international registration has renounced the protection in respect of the European Community prior to a final decision under this Article, the Office shall refund the holder of the international registration a part of the individual fee to be laid down in the Implementing Regulation.

Article 152

Replacement of a Community trade mark by an international registration

The Office shall, upon request, enter a notice in the register that a Community trade mark is deemed to have been replaced by an international registration in accordance with Article 4 bis of the Madrid Protocol.

Article 153

Invalidation of the effects of an international registration

1. The effects of an international registration designating the European Community may be declared invalid.

2. The application for invalidation of the effects of an international registration designating the European Community shall take the place of an application for a declaration of revocation as provided for in Article 50 or for invalidation as provided for in Article 51.

Article 154

Conversion of an international registration into a national trade mark application or into a territorial extension to the Member States

1. Where an international registration designating the European Community has been refused or ceases to have effect, the holder of the international registration may request the conversion of his international registration designating the European Community into a national trade mark application or the conversion of his international registration designating the European Community into a territorial extension to a Member State party to the Madrid Protocol or the Madrid Agreement concerning the international registration of marks, adopted at Madrid on April 14, 1891, as revised and amended (hereafter referred to as "the Madrid Agreement"), under Article 3 ter (2) of the Madrid Protocol or Article 3 ter (2) of the Madrid Agreement. Articles 108 to 110 shall apply, mutatis mutandis.

2. The national trade mark application or the territorial extension to a Member State party to the Madrid Protocol or the Madrid Agreement resulting from the conversion of an international registration designating the Community shall, notwithstanding Article 3 ter (2) of the Madrid Protocol and Article 3 ter (2) of the Madrid Agreement, enjoy in respect of the Member State concerned the date of the international registration pursuant to Article 3 (4) of the Madrid Protocol or the date of the designation of the European Community pursuant to Article 3 ter (2) of the Madrid Protocol if the latter was made subsequently to the international registration, or the date of priority of that registration and, where appropriate, the seniority of a trade mark of that State claimed under Article 148.

3. The request for conversion shall be published.

Article 155

Use of a mark subject of an international registration

For the purposes of applying Articles 15 (1), 43 (2), 50 (1) (a) and 56 (2), the date of publication pursuant to Article 147 (2) shall take the place of the date of registration.

Article 156

Transformation

1. Subject to paragraph 2, the provisions applicable to Community trade mark applications shall apply mutatis mutandis to applications for transformation of an international registration into a Community trade mark application pursuant to Article 9 quinquies of the Madrid Protocol.

2. When the application for transformation relates to an international registration designating the European Community the particulars of which have been published pursuant to Article 147 (2), Articles 38 to 43 shall not apply.

Article 157

Languages

1. The language in which an international application designating the European Community or a request for subsequent territorial extension to the Community was filed shall be considered to be the language of the application pursuant to Article 115.

2. The applicant for an international registration designating the European Community must indicate in his international application a second language which shall be a language of the Office the use of which he accepts as a possible language of proceedings for opposition, revocation or invalidity proceedings.

3. Where the requirement of paragraph 2 is not complied with, the language into which the international registration designating the European Community has been translated by the International Bureau shall be the second language as provided for in Article 115 (3).` (b) A new subparagraph (iv) shall be added to Article 8 (2) (a):

'(iv) trade marks registered under international arrangements which have effect in the Community;` (c) Title XIII becomes Title XIV;

(d) Articles 140, 141, 142 and 143 shall be renumbered as follows:

Article 140 becomes Article 158,

Article 141 becomes Article 159,

Article 142 becomes Article 160,

Article 143 becomes Article 161;

(e) the reference to Article 140 in Article 26 (3) shall be replaced by a reference to Article 158;

(f) the references to Article 141 in Articles 139 (3) and 140 (3) shall be replaced by a reference to Article 159.

Article 2

Entry into force

This Regulation shall enter into force on the date on which the Madrid Protocol enters into force with respect to the European Community. The date of entry into force of this Regulation shall be published in the Official Journal of the European Communities.

This Regulation shall be binding in its entirety and directly applicable in all Member States.

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

(2) The Madrid Agreement concerning the international registration of marks as last revised at Stockholm on 14 July 1967 and as amended on 2 October 1979.

(1) Commission proposal for a Council Decision approving the accession of the Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989, doc. COM(96) 367 final.