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
Date: 1996-07-22
Institutions: European Commission
Subjects: EU trade mark, World Intellectual Property Organisation, intellectual property, tax system, trading operation

COMMISSION OF THE EUROPEAN COMMUNITIES 

Brussels,  22.07.1996 
COM(96) 367  final 

96/0190 (CNS) 

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 

(presented by the Commission) 

EXPLANATORY  MEMORANDUM 

1. 

INTRODUCTION 

On 20 December  1993, the Council  adopted  Council  Regulation  (EC) No 40/94  on 
the Community trade mark (hereafter  referred  to as "the Regulation")1. 

The  Regulation  established  the  Community  trade  mark  system,  which  provides  for 
the  acquisition  of  protection  for  marks  (both  trade  marks  and  service  marks)  with 
unitary effect  for the whole territory of the European Community on the basis of the 
filing  of one single application for their registration as Community trade marks. 

The  Regulation  established  the  Office  for  Harmonization  in  the  Internal  Market 
(Trade  Marks  and  Designs),  (hereafter  referred  to  as  "the  Office")  to  handle  the 
administration of Community trade marks. 

Subsequent  to  a  decision  taken  by  the  representatives  of  the  Governments  of  the 
Member  States,  meeting  at  Head  of  State  and  Government  level  on  29  October 
1993, that the seat of the Office  should be at Spain, in a city to be designated by the 
Spanish Government, the latter designated Alicante as the seat of the  Office. 

On  1 January  1996,  the  Office  opened  its  doors  for  the  filing  of  Community  trade 
mark applications and on  1  April  1996, the Office  became fully  operational. 

On the latter date, the  Madrid  Protocol  became  effective,  having  entered  into  force 
on  1  December  1995. 

The  Madrid  Protocol  provides  for  the  international  registration  of  marks  at  the 
International  Bureau  of  the  World  Intellectual  Property  Organization  (WIPO)  at 
Geneva. Registrations effected  under the Madrid  Protocol are called  international  as 
every  registration  has  effect  in  several  countries  and  regions, potentially  in  all  the 
Contracting  Parties,  including  States  and  interngovernmental  organizations  who 
have  a  regional  Office  for  the  purpose  of  registering  marks  with  effect  in  the 
territory of the organization. 

The  objective  of  this  proposal  is to  establish  a  link  between  the  Community  trade 
mark  system  and the international  registration  system  established  under the  Madrid 
Protocol. 

OJ No L  11,  14.1.1994, p. 1. 

- 1" 

2. 

THE MADRID PROTOCOL 

The Madrid Protocol  was adopted at Madrid on 27 June  1989, to introduce certain 
new features into the system of international registration of marks as existing under 
the  Madrid  Agreement  Concerning  the  International  Registration  of  Marks  of  14 
April  1891  (hereafter  referred  to  as  "the  Madrid  Agreement").  Like  the  Madrid 
Agreement, the Madrid Protocol provides for the international registration of marks 
at the International Bureau of WIPO. 

The new features which were introduced under the* Madrid Protocol  were designed 
to remove the difficulties  that prevented certain countries, including certain Member 
States, from adhering to the Madrid Agreement. 

Furthermore and in contrast with the Madrid Agreement, the Madrid Protocol allows 
intergovernmental  organizations  having  their  own  regional  trade  mark  system  to 
participate in the international registration system. 

The following  four main new procedural  features  which were introduced under the 
Madrid Protocol. 

(i)  The applicant for international registration may base his application not only 
on  a  registered  national  or  regional  mark  but  also  on  an  application  for 
national or regional registration before a national or a regional office  of origin 
(Article 2), 

(ii)  Each Contracting Party in which the applicant seeks protection may, if it has 
made a declaration  to that effect,  within  18 months  (rather than  12 months) 
declare  that  protection  to  the  mark  cannot  be  granted  in  its  territory.  This 
period  may  even  be  extended  further  in  the  case  of  opposition  against  the 
international registration (Article 5), 

(iii)  The office  of each Contracting Party may receive higher designation fees than 

under the Madrid Agreement (Article 8), 

(iv) 

International registrations which are cancelled because the national or regional 
mark on which it is based has ceased to have effect  (central attack; Article 6) 
may be transformed  into national or regional  applications benefiting from its 
filing  date and, where applicable, its priority date (Article 9quinquies). 

It  should  be  underlined  that  in  other  respects  the  Madrid  Protocol  is  similarly 
structured as the Madrid Agreement. 

Thus, in each Contracting Party to the Madrid Protocol, the international registration 
is subject to the same rules which apply to national or regional application, both as 
regards the terms an conditions for registration of the mark and the rights conferred 
to  the  proprietor  of  the  mark.  The  system  of  the  Madrid  Protocol  accordingly 
comprises the following features: 

- 2-

-  the international  registration  does not result in a supranational  mark, but  involves 
one single formality,  equivalent to a whole series of filings of national or regional 
applications; 

-  the  international  registration  cannot  be  applied  for  directly,  but  applied  for  only 
on the basis of a national  or regional  application  or registration  before  a  national 
or regional industrial property  office. 

In  contrast  with  the  Madrid  Agreement,  the  Madrid  Protocol  provides  for  the 
possibility  that  not  only  States,  but  also  intergovernmental  organizations  may 
become a party to the international  registration system. This is provided for  because 
of the coming  into being  of the Community  trade  mark  system  and because  it  was 
thought that the Community trade mark system should be linked to the international 
registration system. 

According  to  Article  14(l)(b),  in  conjunction  with  Article  2(4),  of  the  Madrid 
Protocol,  intergovernmental  organizations  must  comply  with  two  conditions  to 
qualify  for accession to the Madrid Protocol: 

(a)  at  least  one  of  the  member  States  of  that  Organization  must  be  a  party  to  the 
Paris Convention for the Protection of Industrial Property of 20 March  1883; 

(b) that  organization  must  have  a  regional  Office  for  the  purposes  of  registering 
marks  with  effect  in  the  territory  in  which  the  constituting  Treaty  of  that 
organization applies. 

These  provisions  were  specifically  provided  for  to  allow  for  the  European 
Community  to  accede  to  the  Madrid  Protocol  once  the  Community  trade  mark 
system became operational. 

It  is evident  that the  European  Community  complies  with the first condition,  since 
all the Member States are party to the Paris Convention. 

The  second  condition  is  also  met  by  the  European  Community,  since  the 
Harmonization Office  became fully  operational on  1  April  1996. 

Since  the  Madrid  Agreement  continues  to  constitute  an  attractive  means  for 
obtaining  international  registration  of marks, the  Madrid  Protocol  will  operate  in  a 
complementary way with the Madrid Agreement. 

3. 

T HE  COMMUNITY  INTEREST IN ADHERING  TO THE MADRID  PROTOCOL 

The  international  registration  of  marks  satisfies  a  requirement  for  simplicity  and 
economy. 

It  greatly  facilitates  access to  protection  under  trade  mark  law:  a  single  procedure, 
administered  by  the  national  or  regional  industrial  property  office  and  the 
International  Bureau  of  WIPO  takes  the  place  of  a  whole  series  of  applications 

-3 

which would otherwise have to be filed directly by individual companies with each 
of the national or regional  offices. 

This  facility  whereby  companies  can  obtain  protection  under  trade  mark  law  on 
foreign  markets  is  an  important  element  of  international  commercial  co-operation 
and helps to increase trade. 

In this respect, the Madrid Protocol has the same objectives as the Community trade 
mark system, although they are achieved through different means. 

Whereas  the  Community  trade  mark  system  provides  for  a complete  and  unified 
regional  trade  mark  registration  system  which  covers  the  whole  territory  of  the 
European Community,  the Madrid Protocol  unifies  the application procedure  only, 
albeit with effect  for potentially all the Contracting Parties to the Paris Convention 
(more than 110 States). 

Therefore,  both  systems  are complementary.  The  linkage  of the  Community  trade 
mark system to  the Madrid  Protocol  will  imply  that  industry  may profit from the 
advantages  of  the  Community  trade  mark  through  the  Madrid  Protocol  and  vice 
versa. In other words, Community trade mark applicants and holders of Community 
trade marks may apply for international protection of their marks through the filing 
of  an  international  application  under  the  Madrid  Protocol  and  holders  of 
international  registrations  under  the  Madrid  Protocol  may  apply  for  protection  of 
their marks as Community trade marks. 

The establishment of the link between the two systems is bound to contribute to the 
development  of  conditions  favourable  to  trade  between  the  European  Community 
and the third countries concerned. 

International non-governmental organizations which represent in particular the users 
of the Community trade mark system and the users of the international  registration 
system  have  repeatedly  expressed  their  strong  interest  in  establishing  the  link 
between the two systems. 

Furthermore,  the  European  Commission  notes  that  the  third  countries  which 
participated in the elaboration of the Madrid Protocol have displayed their interest in 
the  establishment  of  a  link  between  the  international  registration  system  and  the 
Community trade mark. 

In this respect it should be noted that the following  States have signed the Madrid 
Protocol once it was open for signature (from 28 June 1989 to 31 December 1989): 

Austria,  Belgium,  Democratic  People's  Republic  of  Korea,  Denmark,  Egypt, 
Finland,  France,  Germany,  Greece,  Hungary,  Ireland,  Italy,  Liechtenstein, 
Luxembourg,  Monaco,  Mongolia,  Morocco,  Netherlands,  Portugal,  Romania, 
Senegal,  Soviet  Union,  Spain,  Sweden,  Switzerland,  United  Kingdom  and 
Yugoslavia (27). 

- 4-

In the meantime, the following  States have become parties to the Madrid Protocol2: 

China,  Cuba,  Denmark,  Finland,  Germany,  Norway,  Spain,  Sweden  and  United 
Kingdom (9). 

According  to the Agreement  on the European  Economic  Area  signed  in  Oporto  on 
2 May  1992, all  the  Contracting  Parties  thereto  undertake  to  adhere  to  the  Madrid 
Protocol.  Thus,  in  the  foreseeable  future,  all  the  Contracting  States  to  the  EEA 
Agreement will participate in the international registration system. 

In adition  it should be noted that the agreements which have been concluded  by the 
European Community and its Member States with the Central and Eastern  European 
countries, (CEECs) as well as certain Republics of the former  USSR and other third 
countries,  provide  that  the  third  countries  concerned  shall  ratify  or  adhere  to  the 
Madrid Protocol. 

It is difficult  and premature to estimate the possible  success of the Madrid  Protocol 
and its linkage to the Community trade mark system. However, the experiences with 
the Madrid Agreement show that the international registration system operates to the 
satisfaction  of companies established in the States that are parties to it (51)3. 

The  statistics  published  by  WIPO  on  the  operation  of  the  Madrid  Agreement  for 
19954  show  that  the  International  Bureau  registered  18,852  marks  and  that  3,808 
international registrations were renewed (total number international registrations and 
renewals  for  1995:  22,660).  The  22,660  international  registrations  represented 
254,190  designations,  covering  the 44  Contracting  States, including  the  9  Member 
States  (Austria,  Benelux,  France,  Germany,  Italy,  Portugal  and  Spain) party  to  the 
Madrid Agreement, which implies that each international  registration  designates  on 
average  11 Contracting States. 

Out  of  these  254,190  designations,  80  %  (203.029)  were  made  by  firms  in  the 
Member  States. Of these  designations  applied  for  by these  firms,  38 %  designated 
Member  States  and  62% non-Member  States.  The  latter  accounted  for  50% of  all 
designations.  The  share  of  the  designations  made  by  firms  in  non-Member  States 
designating  Member  States  accounted  for  8%  of  all  designations,  i.e.  20,138 
designations. 

The European Commission believes that the absence of a link could well impair the 
attractiveness  of  the  Community  trade  mark  in  the  eyes  of  companies  both  inside 
and  outside  the  European  Community  and  thus  adversely  affect  the  objective  of 
completing  the  internal  market,  the  very  reason  for  establishing  the  Community 
trade  mark.  Absence  of  a  link  would  create  an  obstacle  for  companies  in  third 
countries, impeding access to the national markets of the Member States. Such firms 
could thus be encouraged  to  continue along the path  of national  protection  through 
the 
international 

registration  with 

than  applying 

registration, 

rather 

for 

2 
3 
4 

Status on  1  January  1996 according to WIPO statistics 1.1.1996. 
Status on  1  January  1996 according to WIPO statistics  1.1.1996. 
"Les Marques internationales", Statistiques pour l'année  1995. 

Harmonization  Office.  Similarly,  without  the  link,  Community  firms  that  use 
international  registration  would  have  to  continue  to  use  the  national  marks  of  the 
Member  States to have easy access to protection  in third  countries. This would  also 
be detrimental to the Community trade mark. 

Community firms are clearly major users of the international registration system and 
they  give rise to a substantial  number of international  applications  for  protection  in 
third  country  parties  to  the  Madrid  Agreement,  while  far  fewer  firms  in  third 
countries designate Member States. 

The  above  figures  can  not  be  simply  transposed  to  the  situation  which  has  arisen 
after  the  entry  into  force  of  the  Community  trade  mark  system  and  the  entry  into 
force  of the Madrid  Protocol. Nevertheless, taking  into account  that the first  results 
under the Community trade mark system are very promising (on  1  April  1996, more 
than  21.000  applications  for  the  registration  of  Community  trade  marks  had  been 
filed at the Harmonization Office)  and given that it is expected that the  geographical 
coverage  of  the  Madrid  Protocol  will  in  the  near  future  considerably  exceed  the 
geographical  coverage  of  the  Madrid  Agreement,  it  seems  safe  to  assume  that  the 
figures, indicated  above will  constitute  the minimum  once the Madrid  Protocol  has 
become fully  operational, including the participation of the European  Community  in 
the international registration system. 

4. 

LEGAL BASIS 

The  establishment  of  a  link  between  the  Community  trade  mark  and  the  Madrid 
Protocol  would  make  it  easier  for  firms  which  are  applicants  for  or  holders  of 
Community trade marks to obtain protection under trade mark law in third  countries 
and  for  firms  in  the  third  countries  in  question  to  obtain  protection  under  the 
Community trade mark system. Firms could therefore  more easily protect their trade 
marks in the countries in question and penetrate the markets of those countries. 

An international  commitment on the part of the European Community  in this regard 
would  increase  the  attractiveness  of  the  Community  trade  mark  compared  with 
national trade marks and is also directed at a trade objective.  Moreover, the  absence 
of a link would be detrimental to the Community trade mark. 

In  view  of  the  above,  the  accession  of  the  European  Community  to  the  Madrid 
Protocol directly affects  the application of Community trade mark Regulation. 

In its Opinion  1/94,  delivered on  15 November  1994, on the division of competence 
between the European  Community  and the Member  States regarding the  conclusion 
of  the  WTO  Agreement  and  its  annexes,  the  Court  of  Justice  confirmed5  the 
application, in the intellectual property  sphere, of the AETR judgment, delivered  on 
31 March  1971 in Case 22/70.6 

5 
6 

Paragraph  102 of pinion  1/94. 
(1971) ECR 263. 

The European  Commission  considers that this precedent  is applicable to the case in 
question  and  that  Article  235  of the Treaty  should  be  used  as the  appropriate  legal 
basis, in conjunction  with Article 228, paragraph  2, second  sentence, and  paragraph 
3,  first  sub-paragraph  thereof.  In  accordance  with  the  above  precedent,  a 
Community  act to accede to the Madrid Protocol  must be based on the provision  of 
the Treaty  on which the common rules, i.e. the  Community  trade mark  Regulation, 
are based - therefore  in this particular case Article 235. 

It  is  self-evident  that  reference  should  also  be  made  to  Article  228  of  the  Treaty, 
which  confers  powers  on  the  European  Community  to  enter  into  agreements 
between  the  European  Community  and  one  or  more  States  or  international 
organisations. 

PROCEDURE  FOR  THE  ACCESSION  OF  THE  EUROPEAN  COMMUNITY  TO  THE 
MADRID  PROTOCOL 

Under Article  14(l)(b) of the Madrid Protocol,  "any intergovernmental  organization 
may also become party to this Protocol where the following  conditions are  fulfilled: 

(i) 

(ii) 

at  least  one  of the  member  States  of that  organization  is  a party  to  the  Paris 
Convention for the Protection of Industrial Property; 

that  organization  has  a regional  Office  for  the purposes  of  registering  marks 
with effect  in the territory of the organization, provided that such Office  is not 
the subject of a notification  under Article 9quater." 

As has been explained above, the European Community fulfils  both conditions. 

According  to  Article  14(3)  and  (4)(b)  of  the  Madrid  Protocol,  the  instrument  of 
accession to the Protocol  shall be deposited with the Director-general  of WIPO  and 
the Protocol  shall enter into force with regard to the Community  three months  after 
the date on which the accession has been notified by the Director General of WIPO. 

6. 

DECLARATIONS  TO  BE  MADE  IN  THE  FRAMEWORK  OF  THE  ACCESSION  OF  THE 

COMMUNITY TO THE MADRID PROTOCOL 

The  Madrid  Protocol  provides  that  on  certain  items  Contracting  Parties  may  make 
declarations on the occasion of their accession. 

Declarations can be made on the following three subjects: 

-  on  the  extension  of  the  time  limit  for  refusal  of  protection  of  an  international 

registration, pursuant to Article 5 of the Madrid Protocol; 

-  on  the  fees  which  the  Contracting  party  wants  to  receive  in  connection  with 

international registrations pursuant to Article 8 of the Madrid Protocol; 

- 7-

-  on the protection of international registrations which have been effected  under the 
Madrid  Protocol before the date of entry of into force  of the Protocol  with respect 
to the Contracting Party concerned pursuant to Article  14 of the Madrid Protocol. 

The  European  Commission  proposes  that  a declaration  be  made  on  the  fees  which 
the  European  Community  wants  to  receive  in  connection  with  international 
registrations  to  ensure  that  the  individual  fee  system  is  applied  with  regard  to 
designations  of  the  European  Community  under  the  Madrid  Protocol  (Article  8  of 
the Madrid Protocol). 

This is proposed  for the following  reasons: 

Under the Madrid  Agreement, the registration  of a mark at the International  Bureau 
is  subject  to  the  payment  of  an  international  fee,  which  includes  a  basic  fee,  a 
supplementary  fee  for  each  class  of  the  International  Classification,  beyond  three, 
into  which  the  goods  or  services  to  which  the  mark  is  applied  will  fall,  and  a 
complementary  fee  for  any request  for  extension  of protection  under Article  3 ter to 
third  States (Article 8(2) of the Madrid Agreement). The basic fee  is divided  equally 
among  the  Contracting  Parties  by  the  International  Bureau  after  deduction  of  the 
expenses and charges necessitated  by the implementation  of the Madrid  Agreement; 
whereas the supplementary  fees  and the complementary  fees  are divided  among  the 
contracting  parties in proportion to certain criteria laid down in Article  8(5) and  (6) 
of the Madrid Agreement. 

The  same  distribution  of  fee  income  is  incorporated  in  Article  8  of  the  Madrid 
Protocol. 

However,  the  Madrid  Protocol  has  introduced  an  additional  and  alternative  fee 
system which Contracting Parties may apply with regard to applicants from  States to 
which the Madrid Protocol applies. 

Where  a  Contracting  Party  opts  for  the  individual  fee  system,  the  Office  of  the 
Contracting Party concerned will in principle receive, in relation to each designation 
under the  international  registration,  considerably  higher  fees  than  under the  Madrid 
Agreement. 

This  is  so  because  under  the  individual  fee  system  the  Office  of  the  Contracting 
Party  concerned  will  receive,  instead  of  a  share  in  the  revenue  produced  by  the 
supplementary  fee  and  the  complementary  fee,  an  individual  fee  for  each 
designation under the Madrid Protocol, to be paid by the international applicant. The 
amount of the individual  fee may be set at the equivalent  of the national  or regional 
registration  fee,  reduced  by  the  savings  resulting  from  the  international  procedure 
(Article 8(7)(a) of the Madrid Protocol). 

In  order  to  opt  for  the  individual  fee  system,  Contracting  Parties  must  make  a 
declaration  to  this  effect,  either  in  their  instrument  of  accession  or  later  (Article 
8(7)(b) of the Protocol). In the same declaration, the Contracting Party must indicate 
the amount of the individual fee that it wants to receive. 

In terms of income, the  choice  between the unitary  fee  system  or the individual  fee 
system will have significant  budgetary consequences for the Harmonization  Office. 

Whereas  the  Harmonization  Office  will  under  both  fee  systems  receive  its  share  in 
the  distribution  of  the  basic  fee,  a  major  difference  occurs  when  a  choice  is  to  be 
made  between  the  income  deriving  from  the  distribution  of  the  supplementary  and 
complementary  fees or the income under the individual fee system under the Madrid 
Protocol. 

Under  the  unitary  fee  system,  the  Harmonization  Office  would  be  entitled  to  its 
share  in  the  income  of  the  International  Bureau  on  the  supplementary  and 
complementary  fees.  Given the fact  that the level  of the supplementary  fee is 73 SF 
for each class of goods and services beyond three classes and the complementary  fee 
for  the  designation  of  each  designated  Contracting  Party  is  currently  73  SF  per 
designation, and taking  into account the fee  distribution  scheme as laid down in the 
Madrid  Protocol, the Harmonization  Office  would  probably  receive  around  105  SF 
per designation7. 

Under  the  individual  fee  system,  the  Harmonization  Office  would  be  entitled  to  a 
sum  per  designation  of  the  European  Community  which  would  represent  the 
equivalent  of  the  sum  of  the  fees  which  are  payable  for  the  registration  of  a 
Community  trade  mark,  reduced  by  the  savings  resulting  from  the  international 
procedure.  The  European  Commission  proposes  that  the  level  of  the  fee  should 
therefore  be set at the equivalent  of the  sum of the  fees  which must be paid  for  the 
application  and registration  of Community trade marks, i.e. 2075 ECU8,  diminished 
by  the  savings  resulting  from  the  international  procedure.  This  is  because  the 
expenses  of  the  Harmonization  Office  relating  to  the  handling  of  international 
registrations  designating  the  European  Community  will  be  comparable  to  the 
Office's  expenses  relating  to  the  examination  of  regular  Community  trade  mark 
applications.  As  to  the  possible  savings,  they  will  depend  on  the  outcome  of 
discussions  on the European  Commission proposal  for  a Council Regulation  on the 
establishment  of  a  link  between  the  Community  trade  mark  and  the  Protocol 
Relating  to  the  Madrid  Agreement9,  which  contains  the  provisions  which  are 
necessary  to  implement  the  accession  of  the  European  Community  to  the  Madrid 
Protocol at the Community level. 

It is evident from the above figures that the Harmonization Office  expressed its great 
interest in the European  Community  opting  for  the individual  fee  system  under  the 
Madrid Protocol. 

The  level  of  the  individual  fee  must  be  indicated  in  the  declaration,  which  is 
attached to the Council  decision. 

See  WIPO  document  G17PM/V73,  p.  10  of  31.7.1992;  Fifth  Session  of  the  Working  Group  on  the 
Application of the Madrid Protocol, Geneva, October  12 to  16, 1992. 
See Article 2 of Commission  Regulation  (EC) No 2869/95  of  13 December  1995 on the fees  payable 
to the Office  for Harmonization  in the Internal Market (OJ L 303 of  15.12.1995). 
Doc. COM(96) 372 final. 

- 9-

The  European  Commission  considers  that  there  is  no  need  to  make  use  of the  two 
remaining declarations. 

As to the declaration on the extension  of the time limit for refusal  of protection  of an 
international  registration  pursuant  to  Article  5 of the  Madrid  Protocol,  it  should  be 
noted  that  it  follows  from  the  European  Commission  proposal  for  a  Council 
Regulation  on the  establishment  of  a  link  between  the  Community  trade  mark  and 
the  Protocol  Relating  to  the  Madrid  Agreement  that  the  Harmonization  Office  will 
be able to communicate any provisional  refusal  of protection before the expiry of the 
time  limit  of  one  year  from  the  date  on  which  notification  of  extension  to  the 
European Community has been sent to the Office  by the International  Bureau. 

On  the  third  possible  declaration,  i.e.  the  declaration  denying  protection  of 
international  registrations  which  have  been  effected  under  the  Madrid  Protocol 
before  the  date  of  entry  into  force  of  the  Protocol  with  respect  to  the  European 
Community  (Article  14  of  the  Madrid  Protocol),  the  European  Commission 
considers  that  there  are  no  reasons  to  deviate  from  the  principle  that  international 
registrations  effected  under  the  Madrid  Protocol  before  its  entry  into  force  with 
respect  to the  European  Community  can  be  extended  to  the  European  Community. 
This  is so because the  possible  extensions  of  such  international  registrations  to  the 
European Community will be subject to examination on absolute grounds for  refusal 
and  opposition  on  the  basis  of  earlier  rights  existing  within  the  European 
Community the same as regular Community trade mark applications. 

7. 

COMMENTARY  ON THE  ARTICLES 

Article 1 

The Council is invited to approve the Madrid  Protocol. The text of the Madrid 
Protocol  is  attached  to  this  decision  in  all  the  languages  of  the  European 
Community. 

Article 2 

Article  2(1)  specifies  that  following  the  adoption  of  this  proposal,  the 
President  of  the  Council  shall  deposit  the  instrument  of  accession  with  the 
Director  General  of  WIPO,  in  accordance  with  Article  14  of  the  Madrid 
Protocol.  In  order  to  avoid  any  complications  on  the  implementation  of  the 
Madrid  Protocol  within the Europan  Community  it has been clarified  that  the 
instrument  of  accession  may  be  deposited  as  from  the  date  on  which  the 
Council  has  adopted  the  necessary  implementing  measures  (the  European 
Commission proposal  for  a Council  Regulation  on the establishment  of a link 
between  the  Community  trade  mark  and  the  Protocol  Relating  to the  Madrid 
Agreement, see above). 

The second  paragraph  of Article  2 specifies,  in conjunction  with the  attached 
declaration,  that  the  European  Community  shall  declare  that  it  wants  to 
receive, instead  of a share  in the revenue  produced  by the supplementary  and 
complementary  fee, the individual  fee. 

10 

Article 3 

Once the European Community has become a Contracting Party to the Madrid 
Protocol,  it will be a member  of the Assembly  of the Madrid  Union with  the 
same  rights  and  obligations  as  the  Contracting  States  (Article  10  of  the 
Protocol). 

This implies, for  example, that the European  Community  shall have one  vote 
in the  Assembly,  in  addition  to  the  votes  of  the  Member  States  which  are  a 
party to the Madrid Protocol. 

According to Article  10(2) of the Madrid Protocol, the Assembly  shall, among 
others, deal  with  all  matters concerning  the maintenance  and  development  of 
the Madrid Union, deal with all matters concerning the implementation  of the 
Protocol,  give  directions 
the 
preparation  for  conferences  of revision  of the Protocol  and  adopt  and  modify 
the  provisions  of  the  Regulations  concerning  the  implementation  of  the 
Protocol. 

the  International  Bureau  concerning 

to 

In accordance with Article 228 of the Treaty, the European  Commission  shall 
represent  the  European  Community  in  the  Assembly  of  the  Madrid  Union. 
The European  Community  delegation  may also include representatives  of the 
Office. 

In  view  of  the  above  and  in  order  to  avoid  unnecessary  cumbersome 
procedures  whenever  future  meetings  of the  Assembly  of  the  Madrid  Union 
take  place,  Article  3(1)  of  the  proposal  provides  that  the  Council  authorises 
the European Commission to represent the European Community at the  future 
meetings  of the  Assembly  of the  Madrid  Union  and to  negotiate  matters,  on 
behalf  of  the  European  Community,  which  fall  under  the  competence  which 
the Assembly  has pursuant to Article  10 of the Madrid  Protocol. Article  3(2) 
specifies  that  the  position  of  the  European  Community  will  be  drawn  up  by 
the  European  Commission  and  the  Member  States  within  the  competent 
Council  working  party  or at  on-the-spot  meetings  convened  in  the  course  of 
the work carried out within the framework  of WIPO. 

-11 -

8. 

SUPPLEMENTARY  MEASURES  TO  BE  TAKEN  SUBSEQUENT  TO  THE  ACCESSION  OF 
THE  COMMUNITY  TO THE MADRID  PROTOCOL 

As  has  been  indicated  earlier,  the  accession  of  the  European  Community  to  the 
Madrid Protocol requires implementing measures at Community level. 

The  implementing  measures  can  be  divided  into  two  categories.  First,  the 
Community  legislator has to provide rules for the filing of international  applications 
under the Madrid  Protocol  on the basis of applications  for  Community  trade  marks 
or  registered  Community  trade  marks.  Second,  provisions  must  be  adopted  with 
regard  to  the  protection  and  invalidation  of  international  registrations  designating 
the European  Community. 

Since the Madrid Protocol  shall enter into force three months after  the date on which 
the accession of the European Community has been notified  by the Director  General 
of WIPO, the necessary  implementing  measures  should  enter into force  at the latest 
before the expiry of the three months period. 

9. 

CONCLUSIONS /  PROPOSAL 

On  the  basis  of  the  above,  the  Council  is  invited  to  adopt  the  attached  decision 
approving, on behalf of the European Community, the Madrid Protocol,  authorising 
the  President  of  the  Council  to  deposit  the  instrument  of  accession  to  the  Madrid 
Protocol  and  the  attached  declaration  with  the  Director  General  of  WIPO,  and 
authorising the European  Commission  to represent the European  Community  at the 
meetings of the Assembly  of the Madrid  Union to be held under auspices  of  WIPO 
and to negotiate and approve matters, on behalf of the European Community, which 
fall under the competence of the Assembly. 

12 

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 

THE COUNCIL OF THE EUROPEAN UNION 

Having  regard  to  the  Treaty  establishing  the  European  Community,  and  in  particular 
Article 235, in conjunction  with Article 228(2), second sentence, and Article 228(3),  first 
sub-paragraph, thereof, 

Having regard to the proposal from the European Commission1, 

Having regard to the opinion of the European Parliament2, 

Having regard to the opinion of the Economic and Social Committee3 

Whereas  Council  Regulation  (EC) No  40/94  of  20  December  1993  on the  Community 
trade mark4,  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; whereas 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  effects  throughout  the  entire 
area of the European Community; 

Whereas  following  preparations  initiated  and  carried  out  by  the  World  Intellectual 
Property  Organization with the participation of the Member States which are members of 
the Madrid  Union, the Member  States which  are not members  of the Madrid Union  and 
the  European  Community,  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: 

4  OJ No L  11, 14.1.1994, p. 1. 

13-

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")5; 

Whereas the objectives  of the Madrid Protocol are to ease the way for certain  States, and 
in particular the Member  States which are not currently  parties thereto, to  accede to  the 
system of international registration of marks; 

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  possibility  that  an  intergovernmental  organisation  which  has  a  regional 
office  for  the purpose  of registering  marks may  become  a party  to the  Madrid  Protocol 
was introduced  in the Madrid  Protocol  in order to  allow,  in particular,  for  the  European 
Community to accede to the said 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; 

5  The  Madrid  Agreement  Concerning  the  International  Registration  of  Marks  as  revised  last  at 

Stockholm on 14 July 1967 and as amended on 2 October 1979. 

- 1 4-

Whereas  the establishment  of a link  between  the  Community  trademark  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  the  European  Commission  should  be  authorised  to  represent  the  European 
Community  in the Assembly  of the Madrid Union after  the accession  of the  Community 
to the Madrid Protocol; whereas the European  Community  will not express a view in the 
Assembly in matters relating solely to the Madrid Agreement; 

Whereas  the  competence  of  the  European  Community  to  conclude  or  accede  to 
international  agreements  or  treaties  does  not  derive  only  from  explicit  conferral  by  the 
Treaty  but  may  also  derive  from  other  provisions  of  the  Treaty  and  from  acts  adopted 
pursuant to those provisions by Community institutions; 

Whereas this decision does not affect  the right of the Member States to participate in the 
Assembly of the Madrid Union with regard to their national trade marks. 

HAS DECIDED AS FOLLOWS: 

Article 1 

to 

the  Madrid  Agreement  Concerning 

The  Protocol  Relating 
the  International 
Registration  of Marks, adopted  at Madrid  on 27 June  1989 (hereafter  referred  to  as  "the 
Madrid  Protocol"),  is  hereby  approved  on  behalf  of  the  Community  with  regard  to 
matters within its competence. 

The text of the Madrid Protocol is attached to this Decision. 

Article 2 

1.  The  President  of  the  Council  is  hereby  authorised  to  deposit  the  instrument  of 
accession with the Director General of the World Intellectual Property  Organization 
as  from  the  date  on  which  the  Council  has  adopted  the  measures  which  are 
necessary for the establishment of a link between the Community trade mark and the 
Madrid Protocol. 

2.  The declaration, which  is attached  to this decision,  shall be made in the  instrument 

of accession. 

15 

Article 3 

1.  The  European  Commission  is  hereby  authorised  to  represent  the  European 
Community  at the meetings of the Assembly  of the Madrid  Union to be held  under 
the  auspices  of  the  World  Intellectual  Property  Organization  and  to  negotiate 
matters,  on  behalf  of  the  European  Community,  which  fall  under  the  competence 
which the Assembly has pursuant to Article  10 of the Madrid Protocol. 

2.  The  position  of  the  European  Community  will  be  drawn  up  by  the  European 
Commission and the Member  States within the competent  Council working party  or 
at  on-the-spot  meetings  convened  in the  course  of  the  work  carried  out  within  the 
framework  of the World Intellectual Property Organization. 

Done at Brussels, 

For the Council, 

the President 

16 

ANNEX 

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 

- 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(l)  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 2,075  ECU6 plus, where applicable, 400 ECU  for  each class of 
goods or services exceeding three, or, where applicable, 

a  renewal  fee  of  2,500  ECU7  plus,  where  applicable,  400  ECU  for  each  class  of 
goods or services exceeding three; 

for a collective mark: 

a designation  fee  of 3,875 ECU8 plus, where applicable,  800 ECU  for  each class of 
goods or services exceeding three, or, where applicable, 

a  renewal  fee  of  5,000  ECU9  plus,  where  applicable,  800  ECU  for  each  class  of 
goods or services exceeding three." 

6 

7 
8 
9 

the  said  fees  are provisional;  they  will  be  diminished  by  the  savings  resulting  from  the  international 
procedure, once they are known. 
See footnote  6. 
See footnote  6. 
See footnote  6. 

- 1 7-

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)  Agreement"),  and  the 
organizations referred to  in Article  14(l)(b)  which are party  to 
this Protocol (hereinafter referred to as "the Contracting Organiza 
tions")  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 con 
strued as a reference to both  Contracting States and Contracting 
Organizations. 

(continued on page  II) 

fl - Il - & 

PROTOCOL 

11 

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 re 
ferred to as "the basic application") or that registration (hereinafter 
referred to as "the basic registration") stands may, subject to the 
provisions of  this Protocol,  secure protection 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 Organization (hereinafter referred to 
as "the international registration, "  "the International Register, " 
"the  International  Bureau"  and  "the  Organization," respec 
tively),  provided  that, 

(i)  where  the  basic  application  has  been filed  with  the 

Office of a Contracting State or where the basic registra 
tion has been made by such an Office, the person in whose 
name that application or registration stands is a national 
of  that Contracting State, or is domiciled,  or has a real 
and effective industrial or commercial establishment,  in 
the said  Contracting State, 

(ii)  where  the  basic  application  has  been filed  with  the 

Office of a Contracting Organization 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  a  State  member  of  that  Contracting 
Organization,  or is domiciled,  or has a real and effective 
industrial or commercial establishment, in the territory 
of  the said  Contracting  Organization. 

(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 

(continued  on page 13) 

M 

PROTOCOL 

13 

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 trademarks and ser 
vice marks. 

(4) For the purposes of this Protocol, "territory of a Contract 
ing Party"  means,  where the  Contracting  Party is a  State, the 
territory of  that  State  and,  where the  Contracting  Party  is an 
intergovernmental  organization, the territory in  which the con 
stituting treaty  of  that  intergovernmental  organization  applies. 

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 interna 
tional application correspond to the particulars appearing,  at the 
time of the certification, in the basic application or basic registra 
tion, as the case may be. Furthermore, the said Office shall indicate, 

(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 

(continued  on  page  15) 

21 

PROTOCOL 

15 

established by  the Nice Agreement Concerning  the International 
Classification  of  Goods  and  Services for  the  Purposes  of  the 
Registration of Marks. If  the applicant does not give such indica 
tion, the International Bureau shall classify the goods and services 
in the appropriate classes of the said classification.  The indication 
of  classes given  by  the applicant shall be subject  to  control  by 
the International Bureau, which shall exercise the said control in 
association with the Office of origin. In the event of disagreement, 
between the said Office and the International Bureau, the opinion 
of  the  latter shall prevail. 

(3)  If  the applicant claims color as a distinctive feature  of  his 

mark,  he shall  be required 

(i)  to  state  the  fact,  and  to  file  with  his  international 
application a notice specifying the color or the combina 
tion  of  colors  claimed; 

(ii)  to append to his international application copies in color 

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. 

(4)  The International Bureau shall register immediately the marks 

filed  in accordance with Article 2.  The international registrqtion 
shall bear the date on which the international application was re 
ceived  in  the  Office  of  origin, provided  that  the international 
application has been received by the International Bureau  within 
a  period  of  two  months  from  that  date.  If  the international 
application  has not  been received within that period,  the inter 
national registration shall bear the date on  which the said inter 
national application was received by the International Bureau. The 
International  Bureau shall  notify  the  international  registration 
without  delay to  the  Offices 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  international  application. 

(5)  With a view to the publicity to be given to marks registered 
in  the International Register, each Office shall receive from  the 
International Bureau a number of  copies of  the said gazette free 

(continued  on  page  17) 

& 

PROTOCOL 

17 

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  3** 

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  holder  of 
the international registration. However,  no such request can  be 
made  with respect to  the  Contracting Party whose Office  is the 
Office  of  origin. 

Article  3'" 

Request for  "Territorial Extension11 

(1) Any  request for  extension of  the protection resulting  from 
the  international registration to  any  Contracting  Party  shall  be 
specially mentioned  in  the  international application. 

(2) A  request for  territorial extension may also be made subse 
quently  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  con 
cerned.  Such rècordal shall be published in the periodical gazette 
of  the  International Bureau.  Such  territorial  extension shall  be 
effective from  the date on which it has been recorded in the Inter 
national Register;  it shall cease to  be valid on the expiry  of  the 
international registration to  which it relates. 

(continued  on page 19) 

14) 

A 

PROTOCOL 

19 

Article  4 

Effects  of  International  Registration 

(l)(a)  From the date of  the registration  or recordal effected  in 

accordance  with the provisions of Articles 3 and 3,er,  the protec 
tion  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 protection of  the mark  in  the 
Contracting Party concerned shall, as from  the said date,  be the 
same as if the mark had been registered by the Office of (hat Con 
tracting Party. 

(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 pri 
ority 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 

(I)  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 registration is deemed 
to replace the national or regional registration,  without prejudice 
to  any  rights acquired by  virtue of  the  latter, provided  that 

(continued  on page 21) 

16 

PROTOCOL 

21 

(i)  the protection resulting from  the international registra 
tion extends to  the said Contracting Party  under Arti 
cle 3"r(l)  or (2), 

(ii) all the goods and services listed in the national or regional 
registration  are also listed in the international registra 
tion  in  respect of  the said  Contracting Party, 

(Hi)  such extension takes effect after the date of the national 

or regional  registration. 

(2)  The Office referred to in paragraph (1) shall, upon request, 

be  required  to  take  note  in  its  register  of  the  international 
registration. 

Article  5 

Refusal and Invalidation of Effects  of International Registration 
in  Respect  of  Certain Contracting  Parties 

(1)  Where the applicable legislation  so authorizes, any  Office 

of  a  Contracting Party  which has been notified  by  the Interna 
tional Bureau of  an extension to  that  Contracting  Party,  under 
Article 3"r(l) or (2), of  the protection resulting from  the interna 
tional registration shall have the right to declare in a notification 
of refusal that protection cannot be granted in the said Contract 
ing 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  Protection  of  Industrial 
Property, in the case of  a mark  deposited direct with the  Office 
which notifies  the  refusal. However, protection  may  not  be re 
fused, 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. 

(2)(B)  Any  Office  wishing to exercise such right shall notify  its 

refusal to the International Bureau, together with a statement  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 

(continued  on  page  23) 

& 

PROTOCOL 

23 

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 Parly 

may  declare  that,  for  international  registrations made  under 
this Protocol,  the time  limit of  one year referred to  in  subpara 
graph (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 pro 
tection, such  refusal  may  be notified  by  the  Office  of  the said 
Contracting Party to the International 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 opposition 

is made within a time limit of not more than seven months 
from  the  date  on  which the opposition period begins; 
if  the  opposition  period  expires before  this  time limit 
of seven months,  the notification must  be made within 
a time limit of one month from  the expiry of the opposi 
tion 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 intergovernmen 
tal organization  having made the declaration.  Any  such  declara 
tion may also be made later, in  which  case the declaration shall 
have effect  three months  after its receipt by the Director General 
of  the  Organization  (hereinafter referred to  as  "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. 

(continued  on page 25) 

»-

PROTOCOL 

25 

(e)  Upon  the  expiry  of  a period  of  ten years from  the  entry 
into force  of this Protocol, the Assembly shall examine the opera-
tion  of  the  system  established  by  subparagraphs  (a)  to  (d). 
Thereafter,  the  provisions  of  the  said  subparagraphs may  be 
modified  by  a  unanimous  decision of  the  Assembly. 

(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 International 
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 foi  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  (I)  and (2) 
shall, with respect to that international registration, lose, the benefit 
of  the  right provided  for  in paragraph  (1). 

(6)  Invalidation,  by the competent authorities of a Contracting 
Party,  of  the effects,  in the territory of  that Contracting Party, 
of  an international registration  may not  be pronounced  without 
the holder of such international registration having,  in good time, 
been afforded  the opportunity  of  defending his rights. Invalida 
tion  shall  be  notified  to  the  International  Bureau. 

(continued  on page 27) 

XI 

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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, es 
cutcheons, portraits,  honorary distinctions, titles,  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 legalization as well 
as from  any certification other than that of  the Office  of  origin. 

Article 5"r 

Copies of  Entries in International  Register; 
Searches for  Anticipations; 
Extracts from  International  Register 

(1)  The International Bureau shall issue to any person applying 

therefor,  upon  the payment  of  a fee  fixed  by  the  Regulations, 
a  copy  of  the entries  !n  the International Register 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  legalization. 

(continued on page 29) 

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Article 6 

Period of  Validity of  International Registration; 
Dependence and  Independence of  International Registration 

(1)  Registration  of  a  mark  at  the  International  Bureau  is 
effected for  ten years,  with the possibility  of  renewal under the 
conditions specified in Article  7. 

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

(3)  The protection resulting from  the international registration, 
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 registra 
tion 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  rejection,  revocation, 
cancellation or invalidation,  in respect of all or some of the goods 
and  services listed  in  the  international  registration.  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 

(Hi)  an  opposition  to  the  basic  application 

results, after the expiry of  the five-year period, in a final decision 
of rejection, revocation, cancellation or invalidation, or ordering 
the withdrawal,  of the basic application, or the registration resulting 
therefrom,  or the basic registration,  as the case may be, provided 

(continued on page 31) 

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that such appeal, action or opposition had begun before the ex 
piry of the said period. The same also applies if the basic applica 
tion  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 sub 
ject  of  a proceeding referred to  in item  (i), (ii) or (Hi)  and that 
such proceeding had begun before the expiry of  the said period. 

(4)  The Office of  origin shall, as prescribed in the Regulations, 
notify the International Bureau of the facts  and decisions relevant 
under paragraph (3), and  the International Bureau shall, as pre 
scribed 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 Inter 
national Bureau shall proceed accordingly. 

Article  7 

Renewal  of  International Registration 

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

(2) Renewal may  not  bring about  any  change in  the interna 

tional registration in  its  latest  form. 

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

(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. 

(continued  on page 33) 

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Article 8 

Fees for  International Application  and Registration 

(1)  The Office of origin may fix,  at its own discretion,  and col 
lect, for  its own benefit, a fee  which it may require from  the appli 
cant  for  international  registration or from  the  holder  of  the 
international registration in connection  with the filing of the inter 
national application or the renewal of the international registration. 

(2) Registration of  a mark at the International Bureau shall be 
subject to the advance payment of an international fee  which shall, 
subject  to  the provisions  of  paragraph (7)(a),  include, 

(i)  a  basic fee; 

(ii)  a supplementary fee for  each class of  the International 

Classification,  beyond three,  into which the goods or ser 
vices to  which  the  mark  is applied will fall; 

(Hi)  a complementary fee  for  any  request for  extension  of 

protection  under Article  3"r. 

(3) However, the supplementary fee specified in paragraph (2)(ii) 

may,  without prejudice  to  the date of  the international registra 
tion,  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 appli 
cant,  the international application  shall be deemed to have been 
abandoned. 

(4)  The annual product  of  the  various receipts from  interna 
tional registration, with the exception of the receipts derived from 

(continued  on  page  35) 

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the fees  mentioned in paragraph  (2)(ii)  and (Hi),  shall be divided 
equally among the Contracting Parties by the International Bureau, 
after  deduction  of  the expenses and charges  necessitated by  the 
implementation  of  this Protocol. 

(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 proportion  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. 

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

(7)(a) Any  Contracting Party may declare  that,  in connection 
with each international registration in which it is mentioned under 
Article  3,cr,  and  in connection with the renewal of  any such in 
ternational registration, it  wants to receive,  instead of  a share in 
the revenue 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 ten-year registration, 
or from  the holder of a registration for  a ten-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 men 
tioned  under Article 3"r, 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 subparagraph. 

(continued on page 37) 

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PROTOCOL 

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(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 
organization  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 Interna 
tional 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 
listed in the registration, provided that the new holder is a person 
who, under Article 2(1), is entitled to file international applications. 

(continued  on  page  39) 

3H 

PROTOCOL 

39 

Article  9"is 

Recordai 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 

international registration and any other relevant fact con 
cerning such  representative, 

(Hi)  any limitation, in respect of alt or some of the Contract 
ing Parties, of the goods and services listed in the inter 
national  registration, 

(iv)  any  renunciation, cancellation or  invalidation of  the 

international registration in respect of all or some of the 
Contracting  Parties, 

(v)  any other relevant fact, identified in the Regulations, con 
cerning the rights in a  mark that  is  the subject of an 
international  registration. 

(continued  on  page  41) 

35 

PROTOCOL 

41 

Article  9"r 

Fees for  Certain  Recordals 

Any  recordai under Article 9 or under Article 9** may be sub 

ject  to  the payment  of  a  fee. 

(continued  on  page  43) 

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Article  9"""'r 

Common  Office  of  Several Contracting  States 

(1)  If  several Contracting States agree to effect the unification 
of their domestic legislations on marks, they may notify the Direc 
tor 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 9,uinquits and 

Qtexies 

(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. 

Article 9,uinquiti 

Transformation  of  an International  Registration 
into  National  or Regional Applications 

Where, in  the  event  that  the international registration  is can 
celled 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 interna 
tional 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 extension according to  Arti 
cle 3"r(2) and,  if  the  international registration  enjoyed  priority, 
shall  enjoy  the  same priority,  provided that 

(continued  on  page  45) 

31-

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45 

(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 registration  in respect of  the Con 
tracting Party  concerned,  and 

(Hi)  such application complies with all the requirements of 
the applicable law, including the requirements concern 
ing fees. 

Article 9"xies 

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  ten 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. 

(continued on page 47) 

3* 

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47 

Article  10 

Assembly 

(l)(a)  The  Contracting  Parties  shall  be  members  of  the  same 
(Stockholm) 

to  the  Madrid 

Assembly  as  the  countries  party 
Agreement. 

(b)  Each  Contracting  Party shall be represented  in that  Assembly 
by  one  delegate,  who  may  be  assisted  by  alternate  delegates,  ad 
visors,  and  experts. 

(c)  77?e expenses  of  each delegation  shall  be  borne  by  the  Con 
tracting  Party  which  has  appointed  it,  except  for  the  travel  ex 
penses  and  the  subsistence  allowance  of  one  delegate  for  each 
Contracting  Party,  which shall be paid from  the funds  of  the  Union. 

(2)  The  Assembly  shall,  in  addition  to  the functions  which  it 

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  Pro 
tocol,  due  account  being  taken  of  any  comments  made 
by  those  countries  of  the  Union  which  are not  party  to 
this  Protocol; 

(Hi)  adopt  and  modify  the provisions  of  the Regulations  con 

cerning  the  implementation  of  this  Protocol; 

(iv)  perform  such  other functions  as  are  appropriate  Under 

this  Protocol. 

(3)(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  Agreement  shall  not  have  the  right  to 
vote,  whereas,  on  matters  concerning  only  Contracting  Parties, 
only  the  latter  shall  have  the  right  to  vote. 

(continued  on page 49) 

» 

PROTOCOL 

49 

(b)  One-half  of  the  members  of  the  Assembly  which  have  the 
for 

right  to  vote  on  a  given  matter  shall  constitute  the  quorum 
the  purposes  of  the  vote  on  that  matter. 

(c)  Notwithstanding 

the provisions  of  subparagraph  (b),  //",  in 
any  session,  the  number  of  the  members  of  the 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  Inter 
national  Bureau  shall  communicate 
the  said  decisions  to  the 
members  of  the  Assembly  having  the  right  to  vote  on  the  said 
matter  which  were not  represented  and  shall invite  them  to  express 
in  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),  9sexi"(2),  12 
and  13(2),  the  decisions  of  the  Assembly  shall  require  two-thirds 
of  the  votes  cast. 

(e)  Abstentions 

shall  not  be  considered  as  votes. 

(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  extraordinary 
sessions  as provided  for  by  the  Madrid  (Stockholm)  Agreement, 
the  Assembly  shall  meet  in  extraordinary  session  upon  convoca 
tion  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. 

(continued  on  page  51) 

(\o 

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51 

Article II 

International Bureau 

(1) International registration  and related duties, as well as all 
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 con 
ferences of  revision of  this Protocol. 

(b)  The International Bureau may consult with intergovernmen 
tal and international non-governmental organizations concerning 
preparations for  such conferences  of revision. 

(continued on page 53) 

(H 

PROTOCOL 

53 

(c)  The Director General and persons designated by him shall 

take part,  without  the  right to  vote,  in  the discussions at such 
conferences  of  revision. 

(3)  The  International  Bureau shall carry out  any  other  tasks 

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 con 
tained in Article  12 of  the Madrid (Stockholm) Agreement,  pro 
vided that any reference to Article 8 of  the said Agreement shall 
be deemed to be a reference to Article 8 of this Protocol. Further 
more, for  the purposes of Article 12(6)(b) of the said Agreement, 
Contracting Organizations shall, subject to a unanimous decision 
to the contrary by the Assembly,  be considered to belong to con 
tribution class I (one) under the Paris Convention for  the Protec 
tion  of  Industrial  Property. 

(continued  on  page  57) 

(a 

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57 

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 communicated 
by  the Director  General to  the  Contracting  Parties at  least six 
months in advance of  their consideration  by  the  Assembly. 

(continued on page 39) 

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

(3)  Any  amendment  to  the  Articles  referred  to  in  para 
graph (1) shall enter into force  one month  after  written  notifica 
tions of  acceptance,  effected  in accordance with their respective 
constitutional processes,  have been received by the Director General 
from  three-fourths of those States and intergovernmental organiza 
tions 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 organizations which are Con 
tracting 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 

(l)(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 organization may also 
become party to this Protocol where the following  conditions are 
fulfilled: 

(i)  at least one of  the member States of  that organization 
is a party  to  the  Paris Convention for  the Protection 
of  Industrial Property; 

(ii)  that organization has a regional Office for  the purposes 
of  registering  marks  with effect  in  the territory of  the 
organization, provided  that such Office is not  the sub 
ject  of  a  notification  under Article Sfucm. 

(continued on page 61) 

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(2) Any State or organization referred to in paragraph (1) may 

sign this Protocol. Any such State or organization may, if it has 
signed this Protocol, deposit an instrument of ratification, accep 
tance or  approval  of  this Protocol or,  if it  has not signed this 
Protocol,  deposit  an instrument  of  accession  to  this Protocol. 

(3)  The  instruments  referred  to  in  paragraph  (2)  shall  be 

deposited  with the Director  General. 

(4)(a)  This Protocol shall enter into force  three months after 
four  instruments of  ratification, acceptance,  approval or acces 
sion have been deposited, provided that at least one of  those in 
struments has been deposited by a country party  to  the Madrid 
(Stockholm) Agreement and at least one other of those instruments 
has been deposited by a State not party to the Madrid (Stockholm) 
Agreement or  by  any of  the organizations  referred to  in  para 
graph  (l)(b). 

(b)  With respect to any other State or organization referred to 
in paragraph (I),  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 organization referred to in paragraph (I) 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. 

(continued  on  page  63) 

45 

PROTOCOL 

63 

Article 15 

Denunciation 

(1)  This Protocol shall remain  in force  without limitation as 

to  time. 

(2) Any  Contracting Party  may  denounce this  Protocol  by 

notification addressed to  the Director  General. 

(continued on page 65) 

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65 

(3) Denunciation shall take effect one year after the day on which 

the  Director General has received the  notification. 

(4)  The right of denunciation provided for  by this Article 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 intergovernmental 
organization at the date on which the denunciation becomes effec 
tive,  the  holder of  such registration  may file  an application for 
the registration of the same mark with the Office of  the denounc 
ing State or intergovernmental organization,  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 ter 
ritorial extension according  to Article 3'"(2) and,  if  the interna 
tional  registration  enjoyed  priority,  enjoy  the  same  priority, 
provided  that 

(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 denounc 
ing State  or  intergovernmental organization, and 

(Hi)  such application complies with all the requirements of 
the applicable law, including the requirements concern 
ing fees. 

(b)  The provisions of subparagraph (a) shall also apply in respect 

of  any  mark  that  is the subject  of  an  international  registration 
having effect  in  Contracting Parties other  than  the denouncing 
State or intergovernmental organization at the date on which denun 
ciation becomes effective and whose holder,  because of the denun 
ciation, . is no longer entitled to file international applications under 
Article 2(1). 

(continued  on  page  67) 

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Article 16 

Signature; Languages;  Depositary Functions 

(l)(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 govern 
ments and organizations,  in the Arabic, Chinese,  German,  Italian, 
Japanese, Portuguese and Russian languages,  and in such  other 
languages as the Assembly  may designate. 

(2)  This Protocol shall remain open for  signature at Madrid 

until  December 31, 1989. 

(3)  The Director General shall transmit two copies, certified by 

the Government of  Spain, of  the signed texts of  this Protocol  to 
all States and intergovernmental organizations  thai may become 
party  to  this Protocol. 

(4)  The Director General shall register  this Protocol  with  the 

Secretariat of  the  United Nations. 

(5)  The Director General shall notify all States and international 

organizations 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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ISSN 0254-1475 

COM(96) 367 final 

DOCUMENTS 

EN 

08 

Catalogue number  : CB-CO-96-368-EN-C 

ISBN 92-78-07215-X 

Office  for Official  Publications of the European Communities 

L-2985  Luxembourg