Council Regulation (EC) No 1992/2003 of 27 October 2003 amending Regulation (EC) No 40/94 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: 2003-10-27
Institutions: Council of the European Union
Subjects: EU trade mark, European Union Intellectual Property Office, accession to an agreement, intellectual property, tax system, trade-mark law

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I

(Acts whose publication is obligatory)

COUNCIL REGULATION (EC) No 1992/2003

of 27 October 2003

amending Regulation (EC) No 40/94 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 Com-
munity, and in particular Article 308 thereof,

Having regard to the proposal from the Commission (1),

Having regard to the opinion of the European Parliament (2),

Having regard to the opinion of the European Economic and
Social Committee (3),

Whereas:

(1)

(2)

(3)

(4)

Regulation (EC) No 40/94 (4)
(the Community trade
mark Regulation), which is based on Article 308 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.
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.

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.

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 Agree-
ment concerning the international registration of marks
of 14 April 1891 as amended (hereafter referred to as
the Madrid Agreement) (5).

the Madrid
As compared to the Madrid Agreement,
Protocol introduced, in its Article 14, as one of the main
innovations the possibility that an intergovernmental

(1) OJ C 300, 10.10.1996, p. 11.
(2) OJ C 127, 2.6.1997, p. 251.
(3) OJ C 89, 19.3.1997, p. 14.
(4) OJ L 11, 14.1.1994, p. 1. Regulation as last amended by Regulation

(EC) No 1653/2003 (OJ L 245, 29.9.2003, p. 36).

(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.

(5)

(6)

(7)

(8)

organisation which has a regional office for the purpose
of registering marks with effect in the territory of the
organisation may become party to the Madrid Protocol.

The Madrid Protocol entered into force on 1 December
1995 and became operational on 1 April 1996 and the
Community trade mark system also became operational
on the latter date.

The Community trade mark system and the international
registration system as established by the Madrid Protocol
are complementary. Therefore, in order to enable firms
to benefit 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 interna-
tional protection of their trade marks through the filing
of
the Madrid
Protocol and, conversely, holders of international regis-
trations under the Madrid Protocol to apply for protec-
tion of their trade marks under the Community trade
mark system.

application under

an international

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

For the above reasons, the Council, acting on a proposal
from the Commission (6), 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 Organisation (WIPO) as
from the date on which the Council has adopted the
measures which are necessary to give effect to the acces-
sion of
the European Community to the Madrid
Protocol. This Regulation contains these measures.

(6) Commission proposal for a Council Decision approving the acces-
sion of the European Community to the Protocol relating to the
Madrid Agreement concerning the international
registration of
marks, adopted at Madrid on June 27, 1989 (OJ C 293, 5.10.1996,
p. 11).

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(9)

(10)

These measures should be incorporated in the Commu-
nity trade mark Regulation through the inclusion of a
new title on ‘International registration of marks’. For this
reason, the legal basis of this proposal should be the
same as the legal basis of the Community trade mark
Regulation, i.e. Article 308 of the Treaty.

Furthermore, it is necessary to provide for rules applying
to the filing of an international application at the Inter-
national Bureau of WIPO through the intermediary of
the Office for Harmonisation in the Internal Market
(trade marks and designs) (the Office).

(11) Where an international application is filed, on the basis
of a Community trade mark application, in a language
other than one of
the languages allowed under the
Madrid Protocol for the filing of international applica-
tions, the Office should make its best efforts to arrange
for the translation of the list of goods or services into
the language indicated by the applicant in order for the
application to be forwarded to the International Bureau
in time to maintain the date of priority.

(12)

(13)

There is nothing in the Madrid Protocol or in the Regu-
lations adopted under the Madrid Protocol which would
determine the language regime to be applied by the
Office when processing an international application or
an international registration.

Finally, the rules and procedures relating to international
registrations designating
the European Community
should, in principle, be the same as the rules and proce-
dures which apply to Community trade mark applica-
tions and the protection of Community trade marks.
According to this principle,
international registrations
designating the European Community should 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 Office of their decision to
operate such a search and should be subject to opposi-
tion in the same way as published Community trade
marks. Likewise international registrations designating
the European Community should be subject to the same
rules on use and invalidation as Community trade marks.
Furthermore the designation of the European Commu-
nity
be
converted into national trade mark applications or into
the designation of Member States which are party to the
Madrid Protocol or the Madrid Agreement where the
designation of the European Community through such
international registrations is refused or ceases to have
effect,

registrations may

international

through

HAS ADOPTED THIS REGULATION:

Article 1

Regulation (EC) No 40/94 is hereby amended as follows:

1. The following subparagraph shall be added to Article

8(2)(a):

‘(iv) trade marks registered under

international arrange-

ments which have effect in the Community;’

2. Article 134(3) shall be replaced by the following:

‘3.
Revenue shall comprise, without prejudice to other
types of income, total fees payable under the fees regula-
tions, total fees payable under the Madrid Protocol referred
to in Article 140 for an international registration desig-
nating the European Communities and other payments
made to Contracting Parties to the Madrid Protocol, and, to
the extent necessary, a subsidy entered against a specific
heading of the general budget of the European Commu-
nities, Commission section.’

3. The following title shall be inserted after title XII:

‘TITLE XIII

INTERNATIONAL REGISTRATION OF MARKS

SECTION I

GENERAL PROVISIONS

Article 140

Application of provisions

Unless otherwise specified in this title, this Regulation and
implementing this Regulation adopted
any regulations
pursuant to Article 158 shall apply to applications for inter-
national registrations under the Protocol relating to the
Madrid Agreement concerning the international registration
of marks, adopted at Madrid on 27 June 1989 (hereafter
referred to as “international applications” and “the Madrid
Protocol”
respectively), based on an application for a
Community trade mark or on a Community trade mark and
to registrations of marks in the international register main-
tained by the International Bureau of the World Intellectual
Property Organisation (hereafter referred to as “international
registrations” and “the International Bureau”, respectively)
designating the European Community.

SECTION 2

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

Article 141

Filing of an international application

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

2. Where an international application is filed before the
mark on which the international registration is to be based
has been registered as a Community trade mark, the appli-
cant for the international registration must indicate whether
the international registration is to be based on a Community
trade mark application or registration. Where the interna-
tional registration is to be based on a Community trade
mark once it is registered, the international application shall
be deemed to have been received at the Office on the date
of registration of the Community trade mark.

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Article 142

Article 145

Form and contents of the international application

International fees

1.
The international application shall be filed in one of
the official languages of the European Community, using a
form provided by the Office. Unless otherwise specified by
the applicant on that form when he files the international
application, the Office shall correspond with the applicant
in the language of filing in a standard form.

2.
If the international application is filed in a language
which is not one of the languages allowed under the Madrid
Protocol, the applicant must indicate a second language
from among those languages. This shall be the language in
which the Office submits the international application to
the International Bureau.

filed in a
3. Where the international application is
language other than one of the languages allowed under the
Madrid Protocol for the filing of international applications,
the applicant may provide a translation of the list of goods
or services in the language in which the international appli-
cation is to be submitted to the International Bureau
pursuant to paragraph 2.

The Office shall forward the international application

4.
to the International Bureau as soon as possible.

5.
The filing of an international application shall be
subject to the payment of a fee to the Office. In the cases
referred to in the second sentence of Article 141(2), the fee
shall be due on the date of registration of the Community
trade mark. The application shall be deemed not to have
been filed until the required fee has been paid.

The international application must fulfil the relevant
laid down in the Implementing Regulation

6.
conditions
referred to in Article 157.

Article 143

Recordal in the files and in the Register

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

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

Article 144

Request for territorial extension subsequent to the
international registration

A request for territorial extension made subsequent 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 in
which the international application was filed pursuant to
Article 142.

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

SECTION 3

INTERNATIONAL REGISTRATIONS DESIGNATING THE
EUROPEAN COMMUNITY

Article 146

Effects of
European Community

international registrations designating the

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

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

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

Article 147

Publication

The Office shall publish the date of registration of a
1.
mark designating the European Community pursuant
to
Article 3(4) of the Madrid Protocol or the date of the subse-
quent designation of the European Community pursuant to
Article 3ter(2) of the Madrid Protocol, the language of filing
of the international application and the second language
indicated by the applicant, the number of the international
registration and the date of publication of such registration
in the Gazette published by the International Bureau, a
reproduction of the mark and the numbers of the classes of
the goods or services in respect of which protection is
claimed.

2.
If no refusal of protection of an international registra-
tion 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.

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Article 148

Seniority

The applicant for an international registration desig-
1.
nating the European Community may claim, in the interna-
tional application, the seniority of an earlier trade mark
registered in a Member State, including a trade mark regis-
tered in the Benelux countries, or registered under interna-
tional arrangements having effect in a Member State, as
provided for in Article 34.

2.
The holder of an international registration designating
the European Community may, as from the date of publica-
tion of the effects of such registration pursuant to Article
147(2), claim at the Office the seniority of an earlier trade
mark registered in a Member State, including a trade mark
registered in the Benelux countries, or registered under
international arrangements having effect in a Member State,
as provided for in Article 35. The Office shall notify the
International Bureau accordingly.

Article 149

Examination as to absolute grounds for refusal

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

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

Refusal of protection shall take the place of refusal of

3.
a Community trade mark application.

4. Where protection of an international registration is
refused by a decision under this Article which has become
final 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 indi-
vidual fee to be laid down in the implementing Regulation.

Article 150

Search

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

2.
As soon as the Office has received a notification of an
international registration designating the European Commu-
nity, the Office shall transmit a copy thereof to the central
industrial property office of each Member State which has
informed the Office of its decision to operate a search in its
own register of trade marks as provided for in Article 39(2).

The Office shall inform the proprietors of any earlier
4.
Community trade marks or Community trade mark applica-
tions cited in the Community search report of the publica-
tion of
registration designating the
European Community as provided for in Article 147(1).

international

the

Article 151

Opposition

International

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

2.
Notice of opposition shall be filed within a period of
three months which shall begin six 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.

Refusal of protection shall take the place of refusal of

3.
a Community trade mark application.

4. Where protection of an international registration is
refused by a decision under this Article which has become
final or where the holder of the international registration
has renounced the protection in respect of the European
Community prior to a decision under this Article which has
become final, the Office shall refund the holder of the inter-
national 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 inter-
national 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.

Article 153

Invalidation of the effects of an international registra-
tion

The effects of an international registration designating

1.
the European Community may be declared invalid.

2.
The application for invalidation of the effects of an
international registration designating the European Commu-
nity shall take the place of an application for a declaration
of revocation as provided for in Article 50 or for invalida-
tion as provided for in Article 51 or Article 52.

Article 154

Conversion of a designation of the European Commu-
registration into a
nity through an international
national trade mark application or into a designation of
Member States

1. Where a designation of
the European Community
through an international registration has been refused or
ceases to have effect, the holder of the international registra-
tion may request the conversion of the designation of the
European Community:
(a) into a national trade mark application pursuant to Arti-

3.

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

cles 108 to 110 or

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(b) into a designation of a Member State party to the
Madrid Protocol or the Madrid Agreement concerning
the international
registration of marks, adopted at
Madrid on 14 April 1891, as revised and amended
(hereafter
the Madrid Agreement),
provided that on the date when conversion was
requested it was possible to have designated that
Member State directly under the Madrid Protocol or the
Madrid Agreement. Articles 108 to 110 shall apply.

referred to as

The national trade mark application or the designation
2.
of a Member State party to the Madrid Protocol or the
Madrid Agreement resulting from the conversion of the
designation of the European Community through an inter-
national registration shall 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 extension to 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
the
seniority of a trade mark of that State claimed under Article
148.

that registration and, where appropriate,

3.

The request for conversion shall be published.

Article 155

Use of a mark subject of an international registration

For the purposes of applying Article 15(1), Article 43(2),
Article 50(1)(a) and Article 56(2), the date of publication
pursuant to Article 147(2) shall take the place of the date of
registration for the purpose of establishing the date as from
which the mark which is the subject of an international
registration designating the European Community must be
put to genuine use in the Community.

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 interna-
tional 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 Commu-
nity the particulars of which have been published pursuant
to Article 147(2), Articles 38 to 43 shall not apply.’

4. Title XIII becomes Title XIV.

5. Articles 140, 141, 142 and 143 shall be renumbered as

follows:
Article 140 becomes Article 157
Article 141 becomes Article 158
Article 142 becomes Article 159
Article 143 becomes Article 160.

6. The reference to Article 140 in Article 26(3) shall be

replaced by a reference to Article 157.

7. The reference to Article 141 in Article 139(3) and Article

140(3) shall be replaced by a reference to Article 158.

Article 2

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 Union.

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

Done at Luxembourg, 27 October 2003.

For the Council

The President

A. MATTEOLI