Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 - Declarations
Date: 1989-06-27
Institutions: Austria, Belgium, Denmark, Egypt, European Community, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, Mongolia, Morocco, Netherlands, North Korea, Portugal, Romania, Russia, Senegal, Serbia, Spain, Sweden, Switzerland, United Kingdom, World Intellectual Property Organisation
Subjects: European Union Intellectual Property Office, accession to an agreement, intellectual property, multilateral agreement, protocol to an agreement, tax system

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relating to the Madrid Agreement concerning the international registration of marks, adopted at
Madrid on 27 June 1989

PROTOCOL

Article 1

Membership in the Madrid Union

The States party to this Protocol (hereinafter referred to as the
contracting States), even where they are not party to the
Madrid Agreement concerning the international registration of
marks as revised at Stockholm in 1967 and as amended in
1979 (hereinafter referred to as the Madrid (Stockholm) Agree-
ment), and the organisations referred to in Article 14(1)(b)
which are party to this Protocol (hereinafter referred to as the
contracting organisations) shall be members of the same Union
of which countries party to the Madrid (Stockholm) Agreement
are members. Any reference in this Protocol to ‘contracting
parties’ shall be construed as a reference to both contracting
States and contracting organisations.

Article 2

Securing protection through international registration

1. Where an application for the registration of a mark has
been filed with the office of a contracting party, or where a
mark has been registered in the register of the office of a
contracting party, the person in whose name that application
(hereinafter referred to as the basic application) or that registra-
tion (hereinafter referred to as the basic registration) stands
may, subject to the provisions of this Protocol, secure protec-
tion for his mark in the territory of the contracting parties, by
obtaining the registration of that mark in the register of the
International Bureau of the World Intellectual Property Organi-
sation (hereinafter referred to as ‘the international registration’,
‘the International Register’,
‘the International Bureau’ and the
‘Organisation’, respectively), provided that:

(i) where the basic application has been filed with the office of
a contracting State or where the basic registration has been
made by such an office, the person in whose name that
that
application or registration stands is a national of
contracting State, or is domiciled, or has a real and effective
industrial or
said
contracting State;

establishment,

commercial

in the

(ii) where the basic application has been filed with the office of
a contracting organisation or where the basic registration
has been made by such an office, the person in whose
name that application or registration stands is a national of
that contracting organisation, or is
a State member of
domiciled, or has a real and effective industrial or commer-
cial establishment, in the territory of the said contracting
organisation.

2.
The application for international registration (hereinafter
referred to as the international application) shall be filed with
the International Bureau through the intermediary of the office
with which the basic application was filed or by which the
basic registration was made (hereinafter referred to as the office
of origin), as the case may be.

3.
Any reference in this Protocol to an ‘office’ or an ‘office
of a contracting party’ shall be construed as a reference to the
office that is in charge, on behalf of a contracting party, of the
registration of marks, and any reference in this Protocol to
‘marks’ shall be construed as a reference to trade marks and
service marks.

For

this Protocol,

the purposes of

‘territory of a
4.
contracting party’ means, where the contracting party is a State,
the territory of that State and, where the contracting party is
an intergovernmental organisation, the territory in which the
constituting treaty of
intergovernmental organisation
applies.

that

Article 3

International application

1.
Every international application under this Protocol shall
be presented on the form prescribed by the regulations. The
office of origin shall certify that the particulars appearing in the
international
particulars
appearing, at the time of the certification, in the basic applica-
tion or basic registration, as the case may be. Furthermore, the
said office shall indicate:

correspond

application

the

to

(i) in the case of a basic application, the date and number of

that application;

(ii) in the case of a basic registration, the date and number of
that registration as well as the date and number of the
application from which the basic registration resulted. The
office of origin shall also indicate the date of the interna-
tional application.

2.
The applicant must indicate the goods and services in
respect of which protection of the mark is claimed and also, if
possible, the corresponding class or classes according to the
classification established by the Nice Agreement concerning the
the
international classification of goods and services
purposes of the registration of marks. If the applicant does not
give such indication, the International Bureau shall classify the
goods and services in the appropriate classes of the said classifi-
cation. The indication of classes given by the applicant shall be
subject to control by the International Bureau, which shall exer-
cise the said control in association with the office of origin. In
the event of disagreement between the said office and the Inter-
national Bureau, the opinion of the latter shall prevail.

for

If the applicant claims colour as a distinctive feature of

3.
his mark, he shall be required:

(i) to state the fact, and to file with his international applica-
tion a notice specifying the colour or the combination of
colours claimed;

(ii) to append to his international application copies in colour
of the said mark, which shall be attached to the notifica-
tions given by the International Bureau, the number of such
copies shall be fixed by the regulations.

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The International Bureau shall register immediately the
4.
marks filed in accordance with Article 2. The international
registration shall bear the date on which the international
application was received in the office of origin, provided that
the international application has been received by the Interna-
tional Bureau within a period of two months from that date. If
the international application has not been received within that
period, the international registration shall bear the date on
which the said international application was received by the
International Bureau. The International Bureau shall notify the
offices
international
concerned. Marks registered in the International Register shall
be published in a periodical gazette issued by the International
Bureau, on the basis of the particulars contained in the interna-
tional application.

registration without

to the

delay

5. With a view to the publicity to be given to marks regis-
tered in the International Register, each office shall receive from
the International Bureau a number of copies of the said gazette
free of charge and a number of copies at a reduced price, under
the conditions fixed by the assembly referred to in Article 10
(hereinafter referred to as the assembly). Such publicity shall be
deemed to be sufficient for the purposes of all the contracting
parties, and no other publicity may be required of the holder of
the international registration.

Article 3bis

Territorial effect

The protection resulting from the international registration
shall extend to any contracting party only at the request of the
person who files the international application or who is the
the international registration. However, no such
holder of
request can be made with respect to the contracting party
whose office is the office of origin.

Article 3ter

Request for ‘territorial extension’

Any request

the protection resulting
1.
from the international registration to any contracting party
shall be specially mentioned in the international application.

for extension of

A request

2.
for territorial extension may also be made
subsequently to the international registration. Any such request
shall be presented on the form prescribed by the regulations. It
shall be immediately recorded by the International Bureau,
which shall notify such recordal without delay to the office or
offices concerned. Such recordal shall be published in the peri-
the International Bureau. Such territorial
odical gazette of
extension shall be effective from the date on which it has been
recorded in the International Register; it shall cease to be valid
on the expiry of
the international registration to which it
relates.

Article 4

Effects of international registration

1.

(a) From the date of the registration or recordal effected in
accordance with the provisions of Articles 3 and 3ter,
the protection of the mark in each of the contracting
parties concerned shall be the same as if the mark had
been deposited direct with the office of that contracting

party. If no refusal has been notified to the International
Bureau in accordance with Article 5(1) and (2) or if a
refusal notified in accordance with the said Article has
been withdrawn subsequently,
the
mark in the contracting party concerned shall, as from
the said date, be the same as if the mark had been regis-
tered by the office of that contracting party.

the protection of

(b) The indication of classes of goods and services provided
for in Article 3 shall not bind the contracting parties
with regard to the determination of the scope of the
protection of the mark.

2.
Every international registration shall enjoy the right of
priority provided for by Article 4 of the Paris Convention for
the protection of industrial property, without it being necessary
to comply with the formalities prescribed in section D of that
Article.

Article 4bis

Replacement of a national or regional registration by an
international registration

1. Where a mark that is the subject of a national or regional
registration in the office of a contracting party is also the
subject of an international registration and both registrations
stand in the name of the same person, the international regis-
tration is deemed to replace the national or regional registra-
tion, without prejudice to any rights acquired by virtue of the
latter, provided that:

(i) the protection resulting from the international registration
extends to the said contracting party under Article 3ter(1)
or (2);

(ii) all the goods and services listed in the national or regional
registration are also listed in the international registration
in respect of the said contracting party;

(iii) such extension takes effect after the date of the national or

regional registration.

The office referred to in paragraph 1 shall, upon request,
2.
be required to take note in its register of the international regis-
tration.

Article 5

Refusal and invalidation of effects of international registra-
tion in respect of certain contracting parties

1. Where the applicable legislation so authorises, any office
of a contracting party which has been notified by the Interna-
tional Bureau of an extension to that contracting party, under
Article 3ter(1) or (2), of the protection resulting from the inter-
national registration shall have the right to declare in a notifica-
tion of refusal that protection cannot be granted in the said
contracting party to the mark which is the subject of such
extension. Any such refusal can be based only on the grounds
which would apply, under the Paris Convention for the protec-
tion of industrial property,
in the case of a mark deposited
direct with the office which notifies the refusal. However,
protection may not be refused, even partially, by reason only
that the applicable legislation would permit registration only in
a limited number of classes or for a limited number of goods
or services.

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2.

(a) Any office wishing to exercise such right shall notify its
refusal to the International Bureau, together with a state-
ment of all grounds, within the period prescribed by the
law applicable to that office and at the latest, subject to
subparagraphs (b) and (c), before the expiry of one year
from the date on which the notification of the extension
referred to in paragraph 1 has been sent to that office
by the International Bureau.

(b) Notwithstanding subparagraph (a), any contracting party
may declare that, for international registrations made
under this Protocol, the time limit of one year referred
to in subparagraph (a) is replaced by 18 months.

(c) Such declaration may also specify that, when a refusal
of protection may result from an opposition to the
granting of protection, such refusal may be notified by
the office of the said contracting party to the Interna-
tional Bureau after the expiry of the 18-month time
limit. Such an office may, with respect to any given
international registration, notify a refusal of protection
after the expiry of the 18-month time limit, but only if:

(i) it has, before the expiry of the 18-month time limit,
informed the International Bureau of the possibility
that oppositions may be filed after the expiry of the
18-month time limit; and

(ii) the notification of the refusal based on an opposi-
tion is made within a time limit of not more than
seven months from the date on which the opposi-
tion period begins; if the opposition period expires
before this time limit of seven months, the notifica-
tion must be made within a time limit of one month
from the expiry of the opposition period.

(d) Any declaration under subparagraphs (b) or (c) may be
made in the instruments referred to in Article 14(2), and
the effective date of the declaration shall be the same as
the date of entry into force of this Protocol with respect
to the State or intergovernmental organisation having
made the declaration. Any such declaration may also be
made later,
in which case the declaration shall have
effect three months after its receipt by the Director-
General of the organisation (hereinafter referred to as
the Director-General), or at any later date indicated in
the declaration, in respect of any international registra-
tion whose date is the same as or is later than the effec-
tive date of the declaration.

(e) Upon the expiry of a period of 10 years from the entry
into force of this Protocol, the Assembly shall examine
the operation of
the system established by subpara-
graphs (a) to (d). Thereafter, the provisions of the said
subparagraphs may be modified by a unanimous deci-
sion of the Assembly.

national Bureau has received information under paragraph
2(c)(i), it shall, without delay, transmit the said information to
the holder of the international registration.

4.
The grounds for refusing a mark shall be communicated
by the International Bureau to any interested party who may so
request.

5.
Any office which has not notified, with respect to a given
international registration, any provisional or final refusal to the
International Bureau in accordance with paragraphs 1 and 2
shall, with respect to that international registration,
lose the
benefit of the right provided for in paragraph 1.

the

authorities

competent

the effects,

a
by
Invalidation,
6.
contracting party, of
that
contracting party, of an international registration may not be
pronounced without the holder of such international registra-
in good time, been afforded the opportunity of
tion having,
defending his rights. Invalidation shall be notified to the Inter-
national Bureau.

in the territory of

of

Article 5bis

Documentary evidence of legitimacy of use of certain
elements of the mark

Documentary evidence of the legitimacy of the use of certain
elements incorporated in a mark, such as armorial bearings,
escutcheons, portraits, honorary distinctions,
trade
names, names of persons other than the name of the applicant,
or other like inscriptions, which might be required by the
offices of the contracting parties, shall be exempt from any
legalisation as well as from any certification other than that of
the office of origin.

titles,

Article 5ter

Copies of entries in the International Register; searches
for anticipations; extracts from the International Register

The International Bureau shall

1.
issue to any person
applying therefor, upon the payment of a fee fixed by the regu-
the entries in the International Register
lations, a copy of
concerning a specific mark.

2.
The International Bureau may also, upon payment, under-
take searches for anticipations among marks that are the
subject of international registrations.

3.
Extracts from the International Register requested with a
view to their production in one of the contracting parties shall
be exempt from any legalisation.

Article 6

3.
The International Bureau shall, without delay, transmit
one of the copies of the notification of refusal to the holder of
the international registration. The said holder shall have the
same remedies as if the mark had been deposited by him direct
with the office which has notified its refusal. Where the Inter-

Period of validity of international registration; dependence
and independence of international registration

Registration of a mark at

1.
the International Bureau is
effected for 10 years, with the possibility of renewal under the
conditions specified in Article 7.

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Upon expiry of a period of five years from the date of the
2.
international registration, such registration shall become inde-
pendent of the basic application or the registration resulting
therefrom, or of the basic registration, as the case may be,
subject to the following provisions.

Six months before the expiry of the term of protection,
3.
the International Bureau shall, by sending an unofficial notice,
remind the holder of the international registration and his
representative, if any, of the exact date of expiry.

3.
The protection resulting from the international registra-
tion, whether or not it has been the subject of a transfer, may
no longer be invoked if, before the expiry of five years from
the date of the international registration, the basic application
or the registration resulting therefrom, or the basic registration,
as the case may be, has been withdrawn, has lapsed, has been
renounced or has been the subject of a final decision of rejec-
tion, revocation, cancellation or invalidation, in respect of all or
some of the goods and services listed in the international regis-
tration. The same applies if:

(i) an appeal against a decision refusing the effects of the

basic application;

(ii) an action requesting the withdrawal of the basic applica-
tion or the revocation, cancellation or invalidation of the
registration resulting from the basic application or of the
basic registration; or

(iii) an opposition to the basic application

results, after the expiry of the five-year period, in a final deci-
sion of rejection, revocation, cancellation or invalidation, or
ordering the withdrawal, of the basic application, or the regis-
tration resulting therefrom, or the basic registration, as the case
may be, provided that such appeal, action or opposition had
begun before the expiry of the said period. The same also
applies if the basic application is withdrawn, or the registration
resulting from the basic application or the basic registration is
renounced, after the expiry of the five-year period, provided
that, at the time of the withdrawal or renunciation, the said
application or registration was the subject of a proceeding
referred to in item (i), (ii) or (iii) and that such proceeding had
begun before the expiry of the said period.

The office of origin shall, as prescribed in the regulations,
4.
notify the International Bureau of the facts and decisions rele-
vant under paragraph 3, and the International Bureau shall, as
prescribed in the regulations, notify the interested parties and
effect any publication accordingly. The office of origin shall,
where applicable, request the International Bureau to cancel, to
the extent applicable, the international registration, and the
International Bureau shall proceed accordingly.

Article 7

Renewal of international registration

4.
Subject to the payment of a surcharge fixed by the regula-
tions, a period of grace of six months shall be allowed for
renewal of the international registration.

Article 8

Fees for international application and registration

1.
The office of origin may fix, at its own discretion, and
collect, for its own benefit, a fee which it may require from the
applicant for international registration or from the holder of
the international registration in connection with the filing of
the international application or the renewal of the international
registration.

Registration of a mark at the International Bureau shall
fee
to the provisions of paragraph 7(a),

2.
be subject to the advance payment of an international
which shall, subject
include:

(i) a basic fee;

(ii) a supplementary fee for each class of the international clas-
sification, beyond three, into which the goods or services
to which the mark is applied will fall;

(iii) a complementary fee for any request

for extension of

protection under Article 3ter.

3.
However, the supplementary fee specified in paragraph
2(ii) may, without prejudice to the date of the international
registration, be paid within the period fixed by the regulations
if the number of classes of goods or services has been fixed or
disputed by the International Bureau. If, upon expiry of the said
period, the supplementary fee has not been paid or the list of
goods or services has not been reduced to the required extent
by the applicant, the international application shall be deemed
to have been abandoned.

The annual product of the various receipts from interna-
4.
tional registration, with the exception of the receipts derived
from the fees mentioned in paragraph 2(ii) and (iii), shall be
divided equally among the contracting parties by the Interna-
tional Bureau, after deduction of the expenses and charges
necessitated by the implementation of this Protocol.

1.
Any international registration may be renewed for a
period of 10 years from the expiry of the preceding period, by
the mere payment of the basic fee and, subject to Article 8(7),
of the supplementary and complementary fees provided for in
Article 8(2).

Renewal may not bring about any change in the interna-

2.
tional registration in its latest form.

5.
The amounts derived from the supplementary fees
provided for in paragraph 2(ii) shall be divided, at the expiry of
each year, among the interested contracting parties in propor-
tion to the number of marks for which protection has been
applied for in each of them during that year, this number being
multiplied, in the case of contracting parties which make an
examination, by a coefficient which shall be determined by the
regulations.

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The amounts derived from the complementary fees
6.
provided for in paragraph 2(iii) shall be divided according to
the same rules as those provided for in paragraph 5.

Article 9bis

7.

registration in which it

(a) Any contracting party may declare that, in connection
with each international
is
mentioned under Article 3ter, and in connection with
the renewal of any such international registration,
it
instead of a share in the revenue
wants to receive,
produced by the supplementary and complementary
fees, a fee (hereinafter referred to as the individual fee)
whose amount shall be indicated in the declaration, and
can be changed in further declarations, but may not be
higher than the equivalent of the amount which the said
contracting party's office would be entitled to receive
from an applicant for a 10-year registration, or from the
holder of a registration for a 10-year renewal of that
registration, of the mark in the register of the said office,
the said amount being diminished by the savings
resulting from the international procedure. Where such
an individual fee is payable:

(i) no supplementary fees referred to in paragraph 2(ii)
shall be payable if only contracting parties which
have made a declaration under this subparagraph
are mentioned under Article 3ter; and

(ii) no complementary fee referred to in paragraph 2(iii)
shall be payable in respect of any contracting party
which has made a declaration under this subpara-
graph.

(b) Any declaration under subparagraph (a) may be made in
the instruments referred to in Article 14(2), and the
effective date of the declaration shall be the same as the
date of entry into force of this Protocol with respect to
the State or
intergovernmental organisation having
made the declaration. Any such declaration may also be
made later,
in which case the declaration shall have
effect three months after its receipt by the Director-
General, or at any later date indicated in the declaration,
in respect of any international registration whose date is
the same as or is later than the effective date of the
declaration.

Article 9

Recordal of change in the ownership of an international
registration

At the request of the person in whose name the international
registration stands, or at the request of an interested office
made ex officio or at the request of an interested person, the
International Bureau shall record in the International Register
any change in the ownership of that registration, in respect of
all or some of the contracting parties in whose territories the
said registration has effect and in respect of all or some of the
goods and services has effect and in respect of all or some of
the goods and services listed in the registration, provided that
the new holder is a person who, under Article 2(1), is entitled
to file international applications.

Recordal of certain matters concerning an international
registration

The International Bureau shall record in the International
Register:

(i) any change in the name or address of the holder of the

international registration;

(ii) the appointment of a representative of the holder of the
fact

registration and any other

relevant

international
concerning such representative;

(iii) any limitation, in respect of all or some of the contracting
parties, of the goods and services listed in the international
registration;

(iv) any renunciation, cancellation or invalidation of the inter-
the
national registration in respect of all or some of
contracting parties;

(v) any other

relevant

identified in the regulations,
concerning the rights in a mark that is the subject of an
international registration.

fact,

Article 9ter

Fees for certain recordals

Any recordal under Article 9 or under Article 9bis may be
subject to the payment of a fee.

Article 9quater

Common office of several contracting States

1.
If several contracting States agree to effect the unification
of their domestic legislation on marks, they may notify the
Director-General

(i) that a common office shall be substituted for the national

office of each of them, and

(ii) that the whole of their respective territories shall be deemed
to be a single State for the purposes of the application of
all or part of the provisions preceding this Article as well as
the provisions of Articles 9quinquies and 9sexies.

2.
Such notification shall not take effect until three months
after the date of the communication thereof by the Director-
General to the other contracting parties.

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Article 9quinquies

Transformation of

an international
national or regional applications

registration into

that

in the event

the international

Where,
registration is
cancelled at the request of the office of origin under Article
6(4), in respect of all or some of the goods and services listed
in the said registration, the person who was the holder of the
international registration files an application for the registration
of the same mark with the office of any of the contracting
parties in the territory of which the international registration
had effect, that application shall be treated as if it had been
filed on the date of the international registration according to
Article 3(4) or on the date of recordal of the territorial exten-
sion according to Article 3ter(2) and, if the international regis-
tration enjoyed priority, shall enjoy the same priority, provided
that:

(i) such application is filed within three months from the date

on which the international registration was cancelled;

(ii) the goods and services listed in the application are in fact
covered by the list of goods and services contained in the
international
the contracting
party concerned; and

registration in respect of

(c) The expenses of each delegation shall be borne by the
contracting party which has appointed it, except for the
travel expenses and the subsistence allowance of one
delegate for each contracting party, which shall be paid
from the funds of the Union.

The Assembly shall, in addition to the functions which it

2.
has under the Madrid (Stockholm) Agreement, also:

(i) deal with all matters concerning the implementation of this

Protocol;

(ii) give directions to the International Bureau concerning the
preparation for conferences of revision of this Protocol,
due account being taken of any comments made by those
countries of
the Union which are not party to this
Protocol;

(iii) adopt and modify the provisions of

the regulations

concerning the implementation of this Protocol;

(iv) perform such other functions as are appropriate under this

Protocol.

(iii) such application complies with all the requirements of the
applicable law, including the requirements concerning fees.

3.

Article 9sexies

Safeguard of the Madrid (Stockholm) Agreement

1. Where, with regard to a given international application or
a given international registration, the office of origin is the
office of a State that is party to both this Protocol and the
Madrid (Stockholm) Agreement, the provisions of this Protocol
shall have no effect in the territory of any other State that is
also party to both this Protocol and the Madrid (Stockholm)
Agreement.

2.
The Assembly may, by a three-fourths majority, repeal
paragraph 1, or restrict the scope of paragraph 1, after the
expiry of a period of 10 years from the entry into force of this
Protocol, but not before the expiry of a period of five years
from the date on which the majority of the countries party to
the Madrid (Stockholm) Agreement have become party to this
Protocol. In the vote of the Assembly, only those States which
are party to both the said Agreement and this Protocol shall
have the right to participate.

Article 10

Assembly

1.

(a) The contracting parties shall be members of the same
Assembly as the countries party to the Madrid (Stock-
holm) Agreement.

(b) Each contracting party shall be represented in that
Assembly by one delegate, who may be assisted by alter-
nate delegates, advisors, and experts.

(a) Each contracting party shall have one vote in the
Assembly. On matters concerning only countries that
are party to the Madrid (Stockholm) Agreement,
contracting parties that are not party to the said Agree-
ment shall not have the right
to vote, whereas, on
matters concerning only contracting parties, only the
latter shall have the right to vote.

(b) One-half of the members of the Assembly which have
the right to vote on a given matter shall constitute the
quorum for the purposes of the vote on that matter.

the members of

(c) Notwithstanding the provisions of subparagraph (b), if,
in any session,
the
the number of
Assembly having the right to vote on a given matter
which are represented is less than one-half but equal to
or more than one-third of the members of the Assembly
having the right to vote on that matter, the Assembly
may make decisions but, with the exception of decisions
concerning its own procedure, all such decisions shall
take effect only if the conditions set forth hereinafter are
fulfilled. The International Bureau shall communicate
the said decisions to the members of
the Assembly
having the right to vote on the said matter which were
invite them to express in
not represented and shall
writing their vote or abstention within a period of three
months from the date of the communication. If, at the
expiry of this period, the number of such members
having thus expressed their vote or abstention attains
the number of the members which was lacking for
attaining the quorum in the session itself, such decisions
shall take effect provided that at the same time the
required majority still obtains.

(d) Subject to the provisions of Articles 5(2)(e), 9sexies(2),
the

Article 12 and Article 13(2),
the decisions of
Assembly shall require two-thirds of the votes cast.

(e) Abstentions shall not be considered as votes.

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(f) A delegate may represent, and vote in the name of, one

member of the Assembly only.

4.
In addition to meeting in ordinary sessions and extraor-
dinary sessions as provided for by the Madrid (Stockholm)
Agreement, the Assembly shall meet in extraordinary session
upon convocation by the Director-General, at the request of
one-fourth of the members of the Assembly having the right to
vote on the matters proposed to be included in the agenda of
the session. The agenda of such an extraordinary session shall
be prepared by the Director-General.

Article 11

International Bureau

International registration and related duties, as well as all
1.
other administrative tasks, under or concerning this Protocol,
shall be performed by the International Bureau.

2.

(a) The International Bureau shall, in accordance with the
directions of the Assembly, make the preparations for
the conferences of revision of this Protocol.

(b) The International Bureau may consult with intergovern-
mental and international non-governmental organisa-
tions concerning preparations for such conferences of
revision.

(c) The Director-General and persons designated by him
shall take part, without the right to vote, in the discus-
sions at such conferences of revision.

The International Bureau shall carry out any other tasks

3.
assigned to it in relation to this Protocol.

Article 12

Finances

As far as contracting parties are concerned, the finances of the
Union shall be governed by the same provisions as those
contained in Article 12 of the Madrid (Stockholm) Agreement,
provided that any reference to Article 8 of the said Agreement
shall be deemed to be a reference to Article 8 of this Protocol.
Furthermore, for the purposes of Article 12(6)(b) of the said
Agreement, contracting organisations shall, subject to a unani-
mous decision to the contrary by the Assembly, be considered
to belong to contribution class 1 (one) under the Paris Conven-
tion for the protection of industrial property.

Article 13

Amendment of certain Articles of the Protocol

1.
Proposals for the amendment of Articles 10, 11, 12, and
the present Article, may be initiated by any contracting party,
or by the Director-General. Such proposals shall be communi-
cated by the Director-General to the contracting parties at least
six months in advance of their consideration by the Assembly.

Amendments to the Articles referred to in paragraph 1
2.
shall be adopted by the Assembly. Adoption shall require
three-fourths of the votes cast, provided that any amendment
to Article 10, and to the present paragraph, shall require four-
fifths of the votes casts.

3.
Any amendment to the Articles referred to in paragraph
1 shall enter into force one month after written notification of
acceptance, effected in accordance with their respective consti-
tutional processes, have been received by the Director-General
from three-fourths of those States and intergovernmental orga-
nisations which, at the time the amendment was adopted, were
members of the Assembly and had the right to vote on the
amendment. Any amendment to the said Articles thus accepted
shall bind all the States and intergovernmental organisations
which are contracting parties at the time the amendment enters
into force, or which become contracting parties at a subsequent
date.

Article 14

Becoming party to the Protocol; entry into force

1.

(a) Any State that is a party to the Paris Convention for the
protection of industrial property may become party to
this Protocol.

(b) Furthermore, any intergovernmental organisation may
also become party to this Protocol where the following
conditions are fulfilled:

(i) at least one of the member States of that organisa-
tion is a party to the Paris Convention for the
protection of industrial property;

(ii) that organisation has a regional office for

the
purposes of registering marks with effect in the terri-
tory of the organisation, provided that such office is
not
the subject of a notification under Article
9quater.

Any State or organisation referred to in paragraph 1 may
2.
sign this Protocol. Any such State or organisation may, if it has
signed this Protocol, deposit an instrument of ratification,
acceptance or approval of this Protocol or, if it has not signed
this Protocol, deposit an instrument of accession to this
Protocol.

The instruments referred to in paragraph 2 shall be

3.
deposited with the Director-General.

4.

(a) This Protocol shall enter into force three months after
four instruments of ratification, acceptance, approval or
accession have been deposited, provided that at least
one of
those instruments has been deposited by a
country party to the Madrid (Stockholm) Agreement and
at least one other of those instruments has been depos-
ited by a State not party to the Madrid (Stockholm)
Agreement or by any of the organisations referred to in
paragraph 1(b).

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(b) With respect to any other State or organisation referred
to in paragraph 1, this Protocol shall enter into force
three months after the date on which its ratification,
acceptance, approval or accession has been notified by
the Director-General.

5.
Any State or organisation referred to in paragraph 1 may,
when depositing its instrument of ratification, acceptance or
approval of, or accession to, this Protocol, declare that the
protection resulting from any international registration effected
under this Protocol before the date of entry into force of this
Protocol with respect to it cannot be extended to it.

(iii) such application complies with all the requirements
including the requirements

of the applicable law,
concerning fees.

(b) The provisions of subparagraph (a) shall also apply in
respect of any mark that is the subject of an interna-
tional registration having effect in contracting parties
other than the denouncing State or intergovernmental
organisation at the date on which denunciation becomes
effective and whose holder, because of the denunciation,
is no longer entitled to file international applications
under Article 2(1).

Article 15

Denunciation

This Protocol shall remain in force without limitation as

1.
to time.

Any contracting party may denounce this Protocol by

2.
notification addressed to the Director-General.

Denunciation shall take effect one year after the day on

3.
which the Director-General has received the notification.

The right of denunciation provided for by this Article
4.
shall not be exercised by any contracting party before the
expiry of five years from the date upon which this Protocol
entered into force with respect to that contracting party.

5.

(a) Where a mark is the subject of an international registra-
tion having effect in the denouncing State or intergo-
vernmental organisation at
the date on which the
denunciation becomes effective, the holder of such regis-
tration may file an application for the registration of the
same mark with the office of the denouncing State or
intergovernmental organisation, which shall be treated
as if it had been filed on the date of the international
registration according to Article 3(4) or on the date of
recordal of the territorial extension according to Article
registration enjoyed
3ter(2) and,
priority, enjoy the same priority, provided that:

the international

if

(i) such application is filed within two years from the
date on which the denunciation became effective;
(ii) the goods and services listed in the application are
in fact covered by the list of goods and services
contained in the international registration in respect
of the denouncing State or intergovernmental orga-
nisation; and

Article 16

Signature; languages; depository functions

1.

(a) This Protocol shall be signed in a single copy in the
English, French and Spanish languages, and shall be
deposited with the Director-General when it ceases to be
open for signature at Madrid. The texts in the three
languages shall be equally authentic.

(b) Official texts of this Protocol shall be established by the
Director-General, after consultation with the interested
governments and organisations, in the Arabic, Chinese,
German,
Japanese, Portuguese and Russian
languages, and in such other languages as the Assembly
may designate.

Italian,

This Protocol shall remain open for signature at Madrid

2.
until 31 December 1989.

The Director-General shall transmit two copies, certified
3.
by the Government of Spain, of
this
Protocol to all States and intergovernmental organisations that
may become party to this Protocol.

the signed texts of

The Director-General shall register this Protocol with the

4.
Secretariat of the United Nations.

5.
The Director-General shall notify all States and interna-
tional organisations that may become or are party to this
Protocol of signatures, deposits of instruments of ratification,
acceptance, approval or accession, the entry into force of this
protocol and any amendment
thereto, any notification of
denunciation and any declaration provided for in this Protocol.

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DECLARATION

on the individual fee system

The President of the Council, when depositing this instrument of accession with the Director-General of
WIPO, shall attach the following declaration to the instrument of accession:

‘The European Community declares that, in connection with each international registration in which it
is mentioned under Article 3ter(1) or (2) of the Madrid Protocol, and in connection with the renewal of
any such international registration, it wants to receive, instead of a share in the revenue produced by
the supplementary fee and complementary fee,

for an individual mark:
— a designation fee of EUR 1 875 plus, where applicable, EUR 400 for each class of goods or

services exceeding three, or, where applicable,

— a renewal fee of EUR 2 300 plus, where applicable, EUR 500 for each class of goods or services

exceeding three;

for a collective mark:
— a designation fee of EUR 3 675 plus, where applicable, EUR 800 for each class of goods or

services exceeding three, or where applicable,

— a renewal fee of EUR 4 800 plus, where applicable, EUR 1 000 for each class of goods or services

exceeding three.’

on the conversion of a designation of the European Community into designations of its Member
States

NOTIFICATION

The President of the Council, when depositing this instrument of accession with the Director-General of
WIPO, shall attach the following notification to the instrument of accession:

‘The European Community declares that, where a designation of the European Community has been
recorded in the International Register, that designation may, to the extent that it has been refused or
ceases to have effect, be converted into the designation of any of its Member States, provided that the
conditions as set out in Article 154 of the Regulation on the Community trade mark, as amended and
the relevant provisions under the Madrid Agreement and Protocol are met.’

from the European Community to the International Bureau on the period for the notification of
the refusal of protection in the territory of a contracting party (1)

DECLARATION

The European Community hereby declares that, pursuant to Article 5(2)(b) of the Protocol relating to the
Madrid Agreement concerning the international registration of marks (1989), the period of one year to
exercise the right to notify the refusal of protection referred to in Article 5(2)(a) thereof is replaced by a
period of 18 months.

(1) The European Community notes that its intention is that the present declaration be of a temporary nature only. It

will be withdrawn when the elements which justify it have come to an end.