Proposal for a COUNCIL REGULATION (EC) modifying Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trade mark to give effect to the accession of the European Community to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks adopted at Madrid on 27 June 1989
Date: 1996-07-24
Institutions: European Commission
Subjects: EU trade mark, World Intellectual Property Organisation, intellectual property, tax system, trading operation

. * ** 

I  COMMISSION OF THE EUROPEAN  COMMUNITIES 

Brussels, 24.07.1996 
COM(96)  372  final 

96/0198  (CNS) 

Proposal for a 

COUNCIL  REGULATION  ŒC) 

modifying  Council Regulation (\iC) No. 40/94 of 20 December  1993 on the Community 
trade mark to give effect  to the accession of the European Community to the Protocol 
Relating to the Madrid Agreement Concerning the International Registration of Marks 
adopted at Madrid on 27 June 1989 

(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 in 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. 

The  Protocol  relating  to  the  Madrid  Agreement  concerning  the  International 
Registration  of Marks, adopted at Madrid on 27 June  1989 (hereafter  referred  to as 
"the  Madrid  Protocol")  entered  into  force  on  1 December  1995  and  became  also 
operational on 1  April 1996. 

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 intergovernmental  organizations who have 
a regional  Office  for the purpose of registering marks with effect  in the territory  of 
the organization. 

One  of  the  main  innovations  of  the  Madrid  Protocol  compared  to  the  Madrid 
Agreement  on the International  Registration  of Marks of April  14,  1891  (hereafter 
referred  to  as  "the  Madrid  Agreement")  is  that  intergovernmental  organizations 
which have a regional  office  for the purpose of registering marks with effect  in the 
territory of that organization may adhere to it. 

OJNo.  L  11, 14.1.1994, p. 1. 

This innovation was introduced  into the Madrid Protocol  with the specific  intention 
of  allowing  the  European  Community  to  adhere  to  the  international  registration 
system after the entry into force of the Community trade mark system. 

In  order  to  prepare  for  the  accession  of  the  European  Community  to  the  Madrid 
Protocol, the European Commission  has elaborated  two proposals, which are jointly 
presented to the Council. The first Commission proposal relates to the accession of 
the European Community to the Madrid Protocol2. 

This second proposal contains the measures which are necessary to give effect  to the 
accession of the European Community to the Madrid Protocol. 

2.  ON THE STRUCTURE OF THE COMMISSION PROPOSAL 

It  is  proposed  that  the  measures  giving  effect  to  the  accession  of  the  European 
Community  to  the  Madrid  Protocol  be  incorporated  in  the  Regulation  on  the 
Community  trade  mark  through  a  new  Title  on  "International  Registration  of 
marks". 

The reasons for this proposal are as follows. 

In  principle,  the  rules  applying  to  international  registrations  designating  the 
European  Community  are  the  same  as the  rules  which  apply  to  Community  trade 
marks. 

Thus,  international  registrations  designating  the  European  Community  shall  be 
subject  to  examination  on  absolute  grounds  for  refusal  and  relative  grounds  for 
refusal  the  same  as  Community  trade  mark  applications.  Moreover,  the  same 
procedural  rules  shall  apply  with  regard  to  the  examination  of  such  international 
registrations. 

For these reasons, the proposed rules contain many cross-references  to other Articles 
of the Regulation. 

The inclusion of these rules in the Regulation facilitates  access to all the provisions 
which  apply  to  marks which  are protected  for  the  whole territory  of the  European 
Community,  be it through the registration  of the mark as a Community  trade mark 
or  be  it  through  the  designation  of  the  European  Community  in  an  international 
registration effected  under the Madrid Protocol. 

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

Under the  suggested  structure, further  and  notably  purely  technical  and  procedural 
implementing  measures,  such  as  laid  down  in  Commission  Regulations  No. 
2868/95, 2869/95 and 216/963 will in principle apply mutatis mutandis. 

3. 

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.  Like the Madrid Agreement, the Madrid  Protocol  provides 
for the international registration of marks at the International Bureau of WIPO. 

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 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  be  extended  even  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). 

Commission  Regulation  (EC)  No.  2868/95  of  13.12.1995  implementing  Council  Regulation  (EC) 
No. 40/94 on the Community  trade mark; Commission  Regulation  (EC) No. 2869/95  of  13.12.1995 on 
the  fees  payable  to the  Office  for  Harmonization  in the  Internal  Market  (Trade  Marks  and  designs); 
Commission  Regulation  (EC)  No.  216/96  of  5.2.1996  laying  down  the  rules  of  procedure  of  the 
Boards of Appeal  of the Office  for Harmonization  in the Internal  Market (Trade Marks and designs). 

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 applications, both as 
regards  the  terms  and  conditions  for  registration  of  the  mark  and  as  regards  the 
rights  conferred  to the  proprietor  of the  mark.  The  system  of the  Madrid  Protocol 
accordingly comprises the following  features: 

-  the international  registration does not result in a supranational  mark, but amounts 
to a centralised filing system, equivalent to a whole series of filings  of national or 
regional applications; 

-  the international registration cannot be applied for directly; rather it must be filed 
on the basis of a national or regional application or registration  before  a national 
or regional industrial property office  through the intermediary of that  office. 

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. This is the reason why the Madrid 
Protocol contains a safeguardclause  according to which the provisions of the Madrid 
Protocol  have  no  effect  with  regard  to  international  registrations  based  on  trade 
mark applications or registrations originating from  an office  of origin of a State that 
is  a  party  to  both  the  Madrid  Agreement  and  the  Madrid  Protocol  and  which 
designates any other State that is also a party to both the Madrid  Agreement and the 
Madrid Protocol (Article 9sexies). 

4. 

THE  COMMUNITY  INTEREST IN ADHERING TO THE MADRID  PROTOCOL. 

The  Community  interest  in  adhering  to  the  Madrid  Protocol  is  explained  in  the 
commentary to the Commission proposal for a Council decision on the accession of 
the European Community to the Madrid Protocol, to which reference has been made 
earlier. 

The  Commission's  reasons  indicated  in  the  said  proposal  can  be  summarised  as 
follows. 

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

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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  implies  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 under the Community trade mark system. 

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). 

-5 

In the meantime, the following  States have become parties to the Madrid Protocol4: 

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 addition it should be noted that the agreements which have been concluded by the 
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. 

5. 

LEGAL BASIS 

Since  the  rules  giving  effect  to  the  accession  of  the  European  Community  to  the 
Madrid  Protocol  will  be  incorporated  in  the  Regulation  on  the  Community  trade 
mark through  the  inclusion  of a new and  separate  Title within  that  Regulation,  the 
legal basis for this proposal  must be the same as the  legal basis of that  Regulation, 
i.e. Article 235 of the Treaty. 

6.  ON THE ARTICLES 

Article I, subparagraph  (a) 

The provisions  giving effect  to the accession of the European  Community  to 
the  Madrid  Protocol  shall  be  incorporated  in  Council  Regulation  (EC)  No 
40/94  on the  Community  trade  mark  through  the  inclusion  of  a  new  TITLE 
XIII  on  international  registration  of  marks.  As  a  consequence,  TITLE  XIII 
(final provisions) shall become TITLE XIV. 

Section  1 - General  provisions 

Article 140 

As a general  rule, Article  140 provides  that  in principle  Council  Regulation 
40/94  on the  Community  trade mark  and  any  regulations  implementing  that 
Regulation  (the  Commission  regulations  referred  to  above)  shall  apply  to 
requests  for  the  filing  of  an  international  application  at  the  International 
Bureau of WIPO under the Madrid Protocol and to marks for which protection 
within  the  Community  is  sought  through  the  filing  of  an  international 

Status on  1  January  1996 according  to WIPO statistics  1.1.1996. 

6-

application designating the European  Community  at the International  Bureau 
under that Protocol. 

Section  2  -  International  registration  on  the  basis  of  applications  for  a 
Community trade mark and of Community trade marks 

Article 141 

Paragraph 1 

In  accordance  with  Article  2  of  the  Madrid  Protocol,  international 
applications may only be filed on the basis of a national  or regional 
trade  mark  application  or  registration.  Where  a  Community  trade 
mark application or a Community trade mark serves as a basis for the 
international  application,  the  international  application  must  be filed 
through the Harmonization  Office,  which serves as "office  of origin" 
pursuant to the Madrid Protocol. 

Paragraph 2 

The  potential  applicant  for  international  registration  may  prefer  to 
await  the  outcome  of  proceedings  regarding  his  Community  trade 
mark  application  before  applying  for  an  international  registration. 
This course of action may be preferred  because the  application  may 
be changed during the registration procedure and because the validity 
of  the  international  registration  depends,  for  a period  of  five  years 
from  its  registration,  on the  validity  of  the  basic  application  or  the 
basic registration (Article 6 of the Madrid Protocol). 

Under  these  circumstances  potential  applicants  for  international 
registration  may prefer  that notwithstanding  the  fact  that the request 
for  the  filing  of  an  international  application  is  filed  before  the 
Community  trade mark application has matured  in a registration, the 
international  application  should  be  based  on 
registered 
Community trade mark. Thus, the international application  should be 
presented  to  the  International  Bureau  after  the  registration  of  the 
Community trade mark. Paragraph 2 provides for this possibility. In 
such  cases,  the  Office  will  present  the  international  application  as 
early as possible after the registration of the Community trade mark. 

the 

The final part of paragraph 2 establishes that where the presentation 
of the international  application is deferred  until after  the registration 
of the mark as a Community trade mark, the international  application 
shall be  deemed to have been received  by the  Office  on the  date of 
registration  of the  Community  trade  mark.  This fiction ensures  that 
any  international  registration  which  is  based  on  the  "delayed" 
international  application  shall  bear  the  date  of  the  registered 
Community trade mark, provided, of course, that the Office  presented 
the  international  application  to  the  International  Bureau  within  a 
period  of two  months  after  the registration  of the basic  Community 

trade  mark.  If  this  legal  fiction  were  not  included,  the  date  of  the 
international  registration would be cither the date on which the  Office 
received  the  request  to  present  an  international  application,  on  the 
condition  that  the  International  Bureau  received  the  international 
application  within  a period  of two months  from  that  date, or, where 
this  condition  is  not  met,  the  date  on  which  the  international 
application was received  by the International  Bureau (Article  3(4) of 
the Madrid Protocol). 

Article 142 

It  has  been  explained  earlier  that  the  international  application  must  be filed 
through the intermediary of the  Office. 

Subject  to  the  requirements,  laid  down  in  the  Madrid  Protocol,  the 
Regulations  thereunder  and  any  further  requirements  laid  down  in  the 
Implementing  Regulation,  the  international  application  form  must  be 
completed by the applicant for international registration before  it is presented 
to the International Bureau. 

Rule  6  of  the  Common  Regulations  under  the  Madrid  Agreement  and  the 
Madrid Protocol establishes the principle that the languages allowed under the 
Madrid  Protocol  are  English  and  French.  This  implies  that  the  international 
application  must  be filed in  one of these two  languages. In  order  to  avoid  a 
need to legislate again if the language arrangement under the Madrid Protocol 
were to be changed  in the  future,  it is made clear  in the  last part  of the first 
sentence of paragraph 1 that only those languages under the Madrid  Protocol 
may be used which are also a language of the  Office. 

The  second  sentence  of paragraph  1 clarifies  what  implicitly  would  follow 
from the application of Article  115(4) of the Regulation, i.e. that the language 
of the proceedings between the applicant for international registration and the 
Office  shall  be the  language  in which  the  international  application  has  been 
filed. 

Paragraph 2  provides  that  the filing of  an  international  application  through 
the Office  shall  be subject  to the payment of a fee to the Office.  The amount 
of the fee will be laid down in the fees regulations. 

Article 143 

The relevant data concerning  international  registrations which are based  on a 
Community  trade  mark  application  or  on  a Community  trade  mark  shall  be 
recorded in the files of the Community trade mark application and shall, with 
regard to Community trade marks, be entered in the Register. 

Article 144 

A  request  for  territorial  extension  made  subsequently  to  an  international 
registration  under Article 3ter(2) of the Madrid Protocol which  is based  on a 
Community  trade mark  application  or a Community  trade mark  may  be filed 
through the Office.  It is proposed  that holders of the international  registration 
shall  not  be  obliged  to  file  such  requests  through  the  Office,  as  would  bo 
admissible  under  to Rule 7(1) of the Regulations  under the Madrid  Protocol. 
Thus, the holder  of the  international  registration  may  also file such  requests 
direct at the International Bureau. 

Where, however, such request is filed through the intermediary  of the  Office, 
it must be presented in the language of the international application. 

Article 145 

Although  the Regulations  under the  Madrid  Protocol  (Rule  34) would  allow 
payment of international  fees through the intermediary of the office  of origin, 
it is considered appropriate, as is the practisy in most Contracting Parties, that 
international fees must be paid directly to the International Bureau. 

Section  3  -  Effects  of  international  registrations  designating  the  European 
Community 

Article 146 

Article  146 repeats the substance of Article 4(1 )(a) of the Madrid Protocol. 

Paragraph 1 provides that the protection of an international registration shall, 
as from  the date of its registration or subsequent designation accordance with 
the provisions of Articles 3 or 3 ter of the Madrid Protocol, be the same as if it 
had been filed as a Community trade mark application. 

This  implies  for  a  holder  of  an  international  registration  designating  the 
Community that he may, in accordance with Article 9(3), second sentence, of 
the Regulation and until the international registration of a mark has the  effect 
of  a  mark  registered  as  a  Community  trade  mark,  claim  reasonable 
compensation  in  respect  of  matters  arising  after  the  publication  of  the 
particulars  of the  international  registration  by  the  Office  pursuant  to  Article 
147(1). 

Paragraph 2 specifies  in accordance with Article 4(1 )(a), second  sentence, of 
the Madrid Protocol that where the protection of the international  registration 
is not refused  in accordance with Article  5(1) and (2) of the Madrid  Protocol 
or if any such refusal  has been withdrawn, the mark which is the subject of the 
international  registration  shall  be protected  as  a registered  Community  trade 
mark as from the date of its registration in the international register. 

-9 

Paragraph  3  specifies  that  for  the  purposes  of  applying  Article  9(3)  with 
regard to international registrations designating the European Community, the 
date  of  publication  of  a  Community  trade  mark  application  or  of  the 
publication  of  a  registered  Community  trade  mark  shall  be  replaced  by  the 
date of the publication of the particulars of the international registration by the 
Office  pursuant to Article  147(1) and (2). 

Article 147 

All relevant information  relating to international registrations  is published by 
the International Bureau in a publication, known as the "Gazette" (Rule 32 of 
the Common Regulations under the Madrid Agreement  and the Protocol). In 
view of this it is not necessary that  international  registrations  designating the 
European  Community  should  be re-published  in their  entirety  by  the  Office. 
Interested  parties  should  rather  consult  the  Gazette.  If  the  Office  had  to  re 
publish international  registrations repeating  information  already published by 
the  International  Bureau,  it  would  be  confronted  with  a  demanding  task, 
incurring considerable workload and expenditure. 

In this respect, it should be underlined that the large majority  of the Member 
States also  do not re-publish  international  registrations  which  designate  their 
territory as published by the International Bureau. 

Notwithstanding  the above considerations it is considered  useful  to provide a 
service  to  the  public  and  in  particular  the  holders  of  marks  within  the 
European  Community  where  an  international  registration  designating  the 
European  Community  has  been  published  by  the  International  Bureau. 
Therefore,  the Office  will publish  certain  limited particulars  concerning  such 
international  registrations  which  should  enable  interested  parties  to  consult 
further particulars of that international registration in the Gazette. 

Paragraph  J  contains  a  listing  of  those  elements  of  the  publication  of  the 
international  registration  which  will  be  published  by  the  Office  in  order  to 
meet  with  this  objective.  The  publication  of  certain  particulars  of  the 
international  registration  has  the  additional  advantage  that  it  constitutes  the 
date as from which the opposition period pursuant to Article  151 commences. 
The  linkage  of the commencement  of the opposition  period  with the  date  of 
publication  in the  Office's  Bulletin  should  ensure  transparency  and  improve 
the  legal  certainty  on  behalf  of  the  holders  of  earlier  rights  within  the 
European Community. 

According  to paragraph 2, the public  shall  also  be  informed  about  the final 
outcome  of proceedings relating to international  registrations  designating  the 
European  Community  through  the  publication  by  the  Office  of  the  fact  that 
either no refusal has been notified  or that any refusal  has been withdrawn. 

10 

Article 148 

The applicant for or the holder of an international  registration designating the 
European  Community  may  claim,  in  respect  of  his  mark,  the  seniority  of 
earlier  marks which are registered  or which  are having effect  in one or more 
Member  States  the  same  as  applicants  for  or  holders  of  Community  trade 
marks pursuant to Articles 34 and 35 of the Regulation. 

Seniority  may  be  claimed  in  the  international  application  as  well  as  direct 
before  the  Office.  Arrangements  will  be made with  the International  Bureau 
on the claiming of seniority  in the international  application  in particular with 
regard  to  the  question  whether  the  relevant  documents  for  the  claiming  of 
seniority  should  be  filed  at  the  International  Bureau  together  with  the 
international  application  or not.  Details  concerning  the  claiming  of  seniority 
through an international application will be provided for  in the Implementing 
Regulation. 

Article 149 

International  registrations  designating  the  European  Community  shall  be 
subject  to examination  as to absolute  grounds  for  refusal  in  accordance  with 
Articles 7 and 38 of the Regulation in the same way as Community trade mark 
applications. 

Since the individual fee which the holder of the international registration must 
pay for the designation of the European Community represents and comprises 
the sum of the fees which would, if the mark had been filed as a Community 
trade  mark  application,  be payable  in two  steps  (the  application  fee  and  the 
registration fee as provided in the fees regulations), paragraph 4 provides that 
where  protection  of  the  international  registration  is  refused  or  where  the 
holder of the international registration renounces the protection of the mark in 
the European  Community  prior to its acceptance  (such as to avoid  a  refusal), 
the Office  shall refund  a part of the individual  fee. The sum or the percentage 
of  the  individual  fee  to  be  refunded  to  the  holder  of  the  international 
registration will be laid down in the Implementing Regulation. 

Paragraphs  2  and  3  contain  with  regard  to  proceedings  relating  to 
international  registrations  the  same principles  as are  laid  down  in Article  38 
with regard to Community trade mark applications. 

Article 150 

International  registrations  designating  the  European  Community  shall  be 
subject  to  a  search  by  the  Office  in  its  own  Register  in  accordance  with 
Article 39. 

11 

Moreover,  it is assumed that those Member  States which operate  a search in 
their  own  register  of  trade  marks  in  respect  of  Community  trade  mark 
applications pursuant to Article  39(2) will also operate  a search  in respect of 
international registrations designating the European Community. 

Article  150 contains  some  clarifications  concerning  the  proceedings  relating 
to  the  searching  of  international  registrations  designating  the  European 
Community, which are similar to Article 39. 

Paragraph  4  provides  that  the  Office  shall  inform  the  proprietors  of  any 
earlier  Community  trade  marks  or  applicants  for  Community  trade  marks 
cited  in the Community  search report  of the publication  of the particulars  of 
the  international  registration  designating  the  European  Community  as 
provided for in Article 147(1). 

Contrary to the system laid down in Article 39(6) in conjunction  with Article 
40(1) of the Regulation, the publication  of the particulars of the  international 
registration  pursuant  to  Article  147(1)  shall  not  be  deferred  until  the 
conditions which the international registration must satisfy  have been  fulfilled 
and after  the expiry of a period of one month as from  the date on which the 
Office transmits the search reports. 

In accordance  with  Article  147(1), the Office  shall  publish  the particulars  of 
the  international  registration  designating  the  European  Community  shortly 
after  its  publication  in  the  Gazette  by  the  International  Bureau.  Within  a 
period  of nine months from  the date of the publication of these particulars by 
the Office,  oppositions may be filed against the protection of the international 
registration  within  the  European  Community  (see  commentary  on  Article 
151).  This  approach  ensures  that  any  (provisional)  refusals  to  protect  the 
international registration pursuant to Article 5 of the Madrid Protocol  will be 
communicated to the International Bureau before the expiry of one year  from 
the  date  on  which  the  notification  of  the  extension  to  the  European 
Community has been sent to the Office  by the International Bureau. 

Article 151 

International  registrations  designating  the  European  Community  shall  be 
subject to opposition in the same way as Community trade mark  applications 
in accordance with Articles 8, 42 and 43. 

In accordance with paragraph 2, notice of opposition  to the protection  of the 
international  registration  may  be given  within  a period  of  nine  months  from 
the date of the publication of the particulars of the international registration by 
the Office  pursuant to Article 147(1). 

12 

The  reasons  for  linking  the  commencement  of  the  opposition  period  to  the 
publication  of  the  international  registration  pursuant  to  Article  147(1)  are 
explained in the commentary on Article 150 above. 

The reasons why the opposition period is set at nine months can be explained 
as follows. 

It  is assumed  that  it  will  take  about  one  to  two  months  after  the  Office  has 
received  a notification  of  extension  of  an  international  registration  from  the 
International Bureau pursuant to Article 5(2)(a) of the Madrid Protocol  before 
the  Office  has  examined  the  conditions  which  the  international  registration 
must  satisfy  and the central industrial  property  offices  of the  Member  States 
which operate a search pursuant to Article  39(2) have received  a copy  of the 
international registration designating the European Community. 

Subsequently  and  in  accordance  with  Article  39(3),  the  central  industrial 
property  offices  of the Member  States may communicate  their search  reports 
to  the  Office  until  the  expiry  of  a period  of  three  months  from  the  date  on 
which they received a copy of the international registration from the  Office. 

In the meantime, the Office  will carry out an examination on absolute grounds 
for refusal pursuant to Article 149. 

On the basis of the above, the minimum  period  which  is needed  to  examine 
the international registration on absolute grounds and to carry out the searches 
in conformity  with Article 39 of the Regulation is around five months. 

Under  Article  42,  notice  of  opposition  against  a  Community  trade  mark 
application  may  be  given  within  a  period  of  three  months  following  the 
publication of that application. 

Since such publication may not take place before the expiry of a period of one 
month  after  the search reports have been transmitted  to the applicant  for  the 
Community trade mark and given that it is envisaged that procedures relating 
to  international  registrations  designating  the  European  Community  shall,  as 
far  as possible, be identical to procedures relating to Community  trade mark 
applications, another four  months should be added  to the five months  period 
referred to above. 

As a consequence, paragraph 2 provides that the period  within which  notice 
of  opposition  may  be  given  against  the  protection  of  an  international 
registration shall be nine months from the date on which the particulars of the 
international  registration  have  been  published  by  the  Office  pursuant  to 
Article 147(1). 

13 

the  same  principle  which  applies  where 

Paragraph  4  contains 
the 
international registration is refused  protection on absolute grounds pursuant to 
Article  149,  i.e.  where  the  protection  of  the  international  registration  is 
refused  on  relative  grounds  or protection  is renounced  prior  to  such  refusal, 
the  Office  shall  refund  the  holder  of  international  registration  a  part  of  the 
individual fee. 

Article 152 

Article  152  implements  Article  Abis of  the  Madrid  Protocol  in  accordance 
with  which  the  Office  shall,  upon  request,  be  required  to  take  note  in  its 
register  of the international  registration  where such registration  is deemed  to 
replace a registered Community trade mark. 

Article 153 

As  from  the  date  on  which  an  international  registration  designating  the 
European  Community  has  the  same  effect  as  a  Community  trade  mark,  its 
protection  may  be  subject  to  revocation  or  invalidation  as  provided  for  in 
Articles 50 and 51. 

Article  153 contains this principle and adapts the terminology used in Articles 
50 and 51 to protected international registrations. 

Article 154 

International  registrations  designating  the  European  Community  may  be 
converted into national trade mark applications the same as Community trade 
mark applications or Community trade marks pursuant to Articles  108 to 110. 

Thus,  where  the  international  registration  has  been  refused  protection  or, 
where  an  international  registration  that  has  been  granted  protection  in  the 
European  Community,  ceases  to  have  effect,  the  holder  of  the  international 
registration  may  file  a  request  for  the  conversion  of  his  international 
registration into a national trade mark application with the  Office. 

Paragraph 2  specifies  that  the  date  which  the  national  application  resulting 
from  the conversion  of the international  registration  shall enjoy  in respect of 
the  Member  State  concerned  is  the  date  of  the  international  registration 
pursuant to Article 3(4) of the Madrid Protocol  or the date of the  subsequent 
designation  of  the  European  Community  pursuant  to  Article  3ter(2)  of  the 
Madrid Protocol. 

The request for conversion is subject to the payment of a conversion fee to the 
Office. 

14 

On the  basis  of  discussions  which  took  place  during  the  preparation  of  this 
proposal, thought has been given to the possibility to provide the holder of an 
international registration with an attractive alternative to continue his rights at 
the national level following a refusal to protect his international registration or 
when  the  international  registration  ceases  to  have  effect  in  the  European 
Community. 

In this light, it was recalled that protection of a mark at the national level may 
not  only  be  achieved  through  the  filing  of  a national  trade  mark  application 
but  also  through  the filing of  an  international  application  under  the  Madrid 
Agreement, the Madrid Protocol or both, where the State concerned is a party 
to one or both Treaties. 

Thus, in order to protect a mark at the national  level, the holder of the mark 
has two options at his disposal.  Depending  on elements  such  as  commercial 
interests  and  expenses  relating  to  the  protection  of  his  mark  (including 
expenditure  on  fees,  representatives  and  translations),  the  holder  of  a  mark 
will  opt  for  either  national  filings  or  for  the  filing  of  an  international 
application at the International Bureau. 

On  the  basis  of  the  above  considerations,  the  question  arose  whether  the 
holder of an international registration  who would have to fall back on national 
trade mark  systems to continue protection  of his mark could not be given the 
same  options  which  he  would  have  had  if  he  had  sought  protection  for  his 
mark  at  the  national  level.  In  other  words,  the  possibility  was  examined 
whether  the  holder  of  an  international  registration  whose  protection  in  the 
European Community has been refused  or which has ceased to have effect  in 
the  European  Community  should  and  could  be  given the  option  to  continue 
protection  of his mark in the Member  States through  a subsequent  extension 
of  his  international  registration  to  the  Member  States  under  the  Madrid 
Protocol or the Madrid Agreement. 

It is evident that this option would only make sense if the result of the opting-
back into the international  registration  system would be identical to the result 
under the conversion  pursuant to Articles  108 to  110, i.e. if the  mark  would 
enjoy  in  respect  of  the  Member  State  concerned  the  original  date  of  the 
international  registration  and  not  the  later  date  of  a  subsequent  designation 
which would normally be the case under Articles 3ter of the Madrid  Protocol 
and the Madrid Agreement. 

In this respect, it should be recalled that the suggested  option  would  be  fully 
in  line  with  the  legal  effects  of  converting  the  international  registration  into 
national trademark applications under Articles  108 to  110. In accordance with 
Article  154  in  conjunction  with  Articles  108  to  110,  the  international 
registration  may  be  converted  in  national  trade  mark  applications  in  each 
Member  State, enjoying,  in respect  of the Member  State concerned,  the date 
of the international registration. 

15 

The  same  considerations  and  effects  should  apply  to  the  opting-back  to  the 
international  registration  system  as suggested  above. 

For  the  holder  of  the  international  registration,  it  could  make  a  significant 
difference  whether  he  opts  for  conversion  of  his  international  registration 
under  Articles  108  to  110  or  the  opting-back  to  the  international  registration 
system.  In  this  respect,  all  the  reasons  for  which  holders  of  trade  murks  may 
opt  for  the use of the  international  registration  system  rather  than  for  the  filing 
of  national  trade  mark  applications  apply  mutatis  mutandis.  These  reasons 
may,  for  example,  relate to the  management  of the trade  mark  portfolio  or  the 
expenditure  relating to the use of the national  or the international  systems 

Consultations  with  representatives  of  the  International  Bureau  of  WIPO  and 
interested  circles  have  shown  that  the  suggested  alternative  would  be 
welcomed  and  would  contribute  significantly  to  the  attractiveness  of  the 
linkage of the Community  trade mark with the Madrid  Protocol. 

It  is  evident  that  the  introduction  of  the  possibility  of  opting-back  in  the 
international  registration  system  cannot  be  established  unilaterally  by  the 
Community.  Further  and  complementary  provisions  under 
the  Madrid 
Protocol,  the  Madrid  Agreement  or the  Common  Regulations  are  necesssary. 
The  International  Bureau  from  its side has  indicated  to the competent  services 
of  the  Commission  that  the  option  of  WIPO  is  feasible  and  expressed  its 
readiness  to prepare  the  necessary  proposals  to  provide  for  the  optioning-back 
with  the  legal  consequences  as  indicated  above,  within  the  framework  of  the 
Madrid  Protocol, the Madrid  Agreement  or the Common  Regulations. 

The  European  Commission  from  its  side  proposes  the  necessary  provisions 
within Article  154 to give effect  to the option-back  at the Community  level. 

Finally,  it should  be noted that this provision  should  not  be  confused  with  the 
possibility  to  transform  an  international  registration  into  a  Community  trade 
mark  application  under  Article  156 in  conjunction  with  Article  9quinquies  of 
the  Madrid  Protocol.  Whereas  Article  156 provides  for  the  transformation  of 
an  international  registration  designating  the  European  Community  into  a 
Community  trade  mark  application  where  the  international  registration  is 
cancelled  following  a  successful  "central  attack"  against  the  basic  national  or 
regional  trade  mark  or  the  basic  national  or  regional  trade  mark  application 
under  Article  6(4)  of  the  Madrid  Protocol,  Article  154  provides  for  the 
the  European 
conversion  of 
Community  into national  trade mark  applications  in the  Member  States. 

registration  designating 

international 

the 

16 

Article 155 

International  registrations  which  are  granted  protection  in  the  European 
Community are subject to the same rules on use as Community trade marks. 

Article  155 contains a general rule on the use of marks which  are the  subject 
of  an  international  registration,  specifying  that  the  five  years  period  within 
which  the  international  registration  designating  the  European  Community 
must be used (in conformity  with Article  15(1)) runs from  the date on which 
the Office  publishes the particulars of such international  registration  pursuant 
to Article 147(2). 

international 
The  publication  effected  under  Article  147(2)  relates  to 
registrations which  have the same effect  as Community  trade marks and will 
be  effected  by  the  Office  where  a  refusal  has  not  been  transmitted  to  the 
International  Bureau  after  the  expiry  of  the  period  for  refusal  of  protection 
pursuant  to  Article  5(2)(a)  of  the  Madrid  Protocol  (in  the  case  of  a 
Community  designation: one year from  the date on which  the notification  of 
extension  has been sent to the Office)  or, where a procedure on the refusal  of 
protection  has  not  been  finalised  on  date  of expiry  of the  period  for  refusal, 
after  the  date  on  which  a  decision  to  grant  protection  to  the  international 
registration has become  final. 

Article 156 

Article  156  implements  Article  9quinquies  of  the  Madrid  Protocol  on 
transformation  of  an  international  registration  into  a Community  trade  mark 
application  in  the  event  that  the  international  registration  designating  the 
European  Community  is cancelled  under Article  6(4) of the Madrid  Protocol 
(central attack against the basic registration or the basic application). 

As has been indicated in the commentary on Article  154, this provision should 
be  distinguished  from 
the  conversion  of  an  international  registration 
designating the Community  into national trade mark applications  pursuant to 
Article 154. 

Paragraph J  specifies  that  the  application  for  a  European  Community  trade 
mark  which  results  from  the  transformation  of  an  international  registration 
shall be subject to the same provisions which apply to Community trade mark 
applications. Thus, the transformed  Community  trade  mark  application  must 
comply  with the conditions  of filing of Community  trade mark  applications, 
including  the  payment  of  the  relevant  fees,  and  the  application  will,  in 
principle,  be  subject  to  the  same  examination  as  Community  trade  mark 
applications. 

17 

It  should  be  underlined  that  this  implies  that  the  request  for  transformation 
into  a  Community  trade  mark  application  may  be  filed  in  any  official 
language  of  the  European  Community  and  that  the  applicant  must  also 
indicate a second language, in accordance with Article 115. 

However, where the international  registration had, pursuant to Article  146(2), 
the  effect  of  a  mark  registered  as  a  Community  trade  mark  before  the 
international  registration  has  been  cancelled,  the  mark  shall  be  directly 
registered  as  a  Community  trade  mark  (paragraph 2).  In  such  a  case,  the 
request for transformation  will not be subject to examination on absolute and 
relative grounds for refusal nor will it be subject to a search in the Community 
register or the national trade mark registers of the Member States. 

Article 157 

Article  157 contains  the rules  relating  to the  use of  languages  with  regard  to 
international registrations designating the Community. 

The  language  arrangement  relating  to  international  registrations  reflects  the 
language  arrangement  relating  to  Community  trade  mark  applications  and 
Community trade marks pursuant to Article  115 and is based in particular on 
the concept that the holder of an international registration must, in addition to 
the language  of filing, indicate a second  language which  shall  be a language 
of  the  Office  the  use  of  which  he  accepts  as  a  possible  language  of 
proceedings for opposition, revocation or invalidity proceedings. 

Paragraph 1 specifies  that the language in which an international  application 
designating the European  Community  was filed shall be considered  to be the 
language of the application pursuant to Article  115. Furthermore, it is clarified 
that  in conformity  with  the  provisions  under  Article  115(4),  the  language of 
the  international  application  shall  be  the  language  of  proceedings  where  the 
holder of the  international  registration  is the sole party  to proceedings  before 
the Office. 

Since the languages allowed  for  the filing  of international  applications  under 
the  Madrid  Protocol  are  English  and  French,  the  language  of  filing  for  the 
purposes of the proceedings before the Office  can only be English or French. 

Paragraph  2  specifies  that  the  applicant  for  an  international  registration 
designating  the  Community  must  indicate  a  second  language  in  his 
international  application, which must be one of the remaining four  languages 
of  the  Office.  Arrangements  will  be  made  with  the  International  Bureau  to 
include  a  separate  box  in  the  international  application  form  so  that  the 
applicant for  international registration can comply with this condition. Where 
applicant for an international registration has not complied with the obligation 
to indicate a second language, the language in which the International  Bureau 
has  translated  the  international  registration  (English  or  French,  depending  of 
the  language  in  which  the  international  application  has  been  filed)  shall  be 
considered  to  be  the  second  language  indicated  by  him  in  his  international 

18-

fiction 

to 
application.  This 
international  registrations  designating  the  European  Community  and  avoid 
legal and  practical complications  if the applicant  for  international  registration 
has not complied with his obligation to indicate the second language. 

should  streamline  proceedings 

relating 

The  rules  on  the  use  of  languages  with  regard  to  international  registrations 
designating  the  Community  as  described  above  ensures  that  international 
registrations  and Community  trade mark applications  are subject  to the same 
language regime. Thus, the  language regime  applicable  to the  acquisition  of 
trade mark protection at the Community level will be coherent, irrespective of 
the question  whether protection  is sought through  the filing  of a  Community 
trade  mark  application  or  through  the  filing  of  an  international  application 
designating the European Community. 

The same rules on the use of languages apply where the European Community 
is designated through a request for  subsequent territorial protection of a mark 
pursuant to Article 3ter of the Madrid Protocol. 

Article I, subparagraphs (b) to (f) 

Subparagraph (b) 

Subparagraph  (b)  modifies  Article  8(2)(a)  by  adding  international 
registrations designating the European Community as a fourth type of 
earlier trade marks (new subparagraph (iv)). 

Subparagraph (c) 

Subparagraph  (c) is the consequence  of the inclusion  of a new  Title 
XIII on international registration of marks in the Regulation. 

Subparagraph (d) 

The  provisions  which  were  contained  in  Title  XHI(old)  must  be 
renumbered  taking  into  account  the  new  provisions  contained  in 
Title XHI(new). 

Subparagraph (e) and (f) 

References  in  other  provisions  to  the  provisions  of  the  Regulation 
which have been renumbered must be modified  accordingly. 

Article II 

With respect to the European Community, the Madrid Protocol shall enter into 
force  three months after  the date on which its accession has been notified  by 
the Director-General of WIPO. 

19-

In  this  respect,  it  should  be  recalled  that  Article  2(1)  of  the  Commission's 
proposal  for  a  Council  decision  approving  the  accession  of  the  European 
Community  to  the  Madrid  Protocol  to  which  reference  was  made  earlier 
provides  that  following  the  adoption  of  that  decision  by  the  Council,  the 
President  of  the  Council  may  deposit  the  instrument  of  accession  with  the 
Director  General  of  WIPO  from  the  date  on  which  the  Council  has  adopted 
the  necessary  measures  to  give  effect  to  the  accession  of  the  European 
Community to the Madrid Protocol. 

-20 

Proposal for a 
COUNCIL REGULATION (EC) 
modifying  Council Regulation (EC) No. 40/94 of 20 December  1993 on the Community 
trade mark to give effect  to the accession of the European Community to the Protocol 
Relating to the Madrid Agreement Concerning the International  Registration of Marks 
adopted at Madrid on 27 June 1989 

THE COUNCIL OF THE EUROPEAN UNION 

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

Having regard to the proposal from the European 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 mark ("the  Community trade mark Regulation)4, 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  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  OJNo.L  11, 14.1.1994, p. 1. 

21  -

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

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

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

Whereas the establishment  of a link  between the Community  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; 

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. 

22 

WTiereas, for the above reasons, the Council, acting on a proposal from the Commission6, 
approved the Madrid Protocol  and authorised the President of the Council to deposit the 
instrument  of  accession  with  the  Director  General  of  the  World  Intellectual  Property 
Organization  (WIPO)  as from  the date on which the  Council  has  adopted  the  measures 
which  are necessary  to  give  effect  to  the  accession  of the  European  Community  to  the 
Madrid Protocol  ; whereas this Regulation contains these measures; 

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

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

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

HAS ADOPTED THE FOLLOWING REGULATION: 

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

- 2 3-

ARTICLE  I 

Council Regulation (EC) No. 40/94 of 20 December  1993 on the Community trade mark 
shall be amended as follows. 

(a)  The following  Title shall be inserted after TITLE XII: 

TITLE XIII 
INTERNATIONAL REGISTRATION OF MARKS 

SECTION 1 
GENERAL PROVISIONS 

Application of provisions 

Unless  otherwise  specified  in  this  Title  or  in  the  Protocol  Relating  to  the  Madrid 
Agreement  Concerning  the  International  Registration  of  Marks, adopted  at  Madrid 
on  27  June  1989  (hereafter  referred  to  as  "the  Madrid  Protocol"),  and  the 
Regulations adopted under the Madrid Protocol, this Regulation and any regulations 
implementing  this  Regulation  adopted  pursuant  to  Article  159 shall  apply  mutatis 
mutandis  to  applications  for  international  registrations  under  the  Madrid  Protocol 
(hereafter  referred  to  as  "international  applications")  based  on  an  application  for  a 
Community trade mark or on a Community trade mark and to registrations of marks 
in  the  international  register  maintained  by  the  International  Bureau  of  the  World 
to  as  "international 
Intellectual  Property  Organization 
registrations" and "the International Bureau", respectively) designating the European 
Community. 

(hereafter 

referred 

- 2 4-

SECTION 2 
INTERNATIONAL REGISTRATION ON THE BASIS OF APPLICATIONS FOR 
A COMMUNITY TRADE MARK AND OF COMMUNITY TRADE MARKS 

Article 141 
Filing of an international application 

1. 

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

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

Article 142 

Form and contents of the international application 

1. 

2. 

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

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

3. 

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

25-

Les_an.din_ 

ëgister 

1. 

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

2. 

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

Ariicie_L44 
Request l'or territorial extension auj2^quiMioJheJntefnational  registmijoii 

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

Article 145 

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

26 

SECTION 3 
INTERNATIONAL REGISTRATIONS DESIGNATING THE EUROPEAN 
COMMUNITY 

Article 14$ 
Effects  of international registrations designating the European Community 

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

2. 

3. 

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

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

-27 

Article 142 
Publication 

1. 

2. 

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

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

Article 148 
Seniority 

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

-28 

Article 149 
Examination as to absolute grounds for  refusal 

1. 

2. 

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

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

3. 

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

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

-29 

Article 150 
Search 

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

2. 

3. 

4. 

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

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

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

30-

Article 151 
Opposition 

1. 

2. 

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

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

3. 

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

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

Article 152 
Replacement of a Community trade mark by an International Registration 

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

31 

Article 153 
Invalidation of the effects  of an international registration 

1. 

2. 

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

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

Article 154 
Conversion of an international registration into a national trade mark application or 
into a territorial extension to the Member States 

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

32-

2. 

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

3. 

The request for conversion shall be published. 

Article 155 
Use of a mark subject of an international registration 

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

Article 156 
Transformation 

1. 

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

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

33-

Article 157 
Languages 

1. 

2. 

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

territorial  extension 

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

3.  Where the requirement of paragraph 2 is not complied with, the language into 
which the international registration designating the European Community  has 
been  translated  by  the  International  Bureau  shall  be  the  second  language  as 
provided for in Article 115(3). 

(b)  A new sub-paragraph (iv) shall be added to Article 8(2)(a): 

"(iv)  trade marks registered  under  international  arrangements  which have effect  in 

the Community;". 

(c)  Title XIII becomes Title XIV. 

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

Article 140 becomes Article 158 

Article 141 becomes Article 159 

Article  142 becomes Article 160 

Article  143 becomes Article  161. 

(e)  The  reference  to  Article  140  in  Article  26(3)  shall  be  replaced  by  a  reference  to 

Article 158. 

(f)  The references  to Article  141 in Articles  139(3) and  140(3) shall  be replaced  by a 

reference to Article 159. 

34-

ARTICLE II 

ENTRY INTO FORCE 

This  Regulation  shall  enter  into  force  on  the  date  on  which  the  Madrid  Protocol  enters 

into  force  with respect to the  European Community.  The  date  of  entry  into  force  of  this 

Regulation shall be published in the Official  Journal of the European Communities. 

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

States. 

Done at Brussels, 

For the Council 

The President 

35-

ISSN 0254-1475 

COM(96) 372 final 

DOCUMENTS 

EN 

08  u 

Catalogue number  :  CB-CO-96-375-EN-C 

ISBN 92-78-07292-3 

Office for Official Publications of the European Communities 

L-2985 Luxembourg 

2G