2003/793/EC: Council Decision of 27 October 2003 approving the accession of the European Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989
Date: 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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Official Journal of the European Union

14.11.2003

II

(Acts whose publication is not obligatory)

COUNCIL

COUNCIL DECISION

of 27 October 2003

approving the accession of the European Community to the Protocol relating to the Madrid Agree-
ment concerning the international registration of marks, adopted at Madrid on 27 June 1989

(2003/793/EC)

THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Com-
in conjunction with
munity, and in particular Article 308,
first
Article 300(2),
subparagraph, thereof,

second sentence, and Article 300(3),

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)

Council Regulation (EC) No 40/94 of 20 December
1993 on the Community trade mark (4), 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
to which uniform
obtain Community trade marks
protection is given and which produce their effects
throughout the entire area of the European Community.

Following preparations initiated and carried out by the
World Intellectual Property Organisation with the parti-
cipation of the Member States which are members of the
the Member States which are not
Madrid Union,
members of
the Madrid Union and the European
Community, the Diplomatic Conference for the conclu-

(1) OJ C 293, 5.10.1996, p. 11.
(2) OJ C 167, 2.6.1997, p. 252.
(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).

international

sion of a Protocol relating to the Madrid Agreement
concerning the
registration of marks
adopted the Protocol relating to the Madrid Agreement
concerning the international registration of marks (here-
after 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 objectives of the Madrid Protocol are to ease the
way for certain States, and in particular the Member
States which are not currently parties thereto, to accede
to the system of international registration of marks.

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

(3)

(4)

(5)

(6)

(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.

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(7)

(8)

(9)

(10)

(11)

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 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 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

Moreover,
the establishment of a link between the
Community trade mark system and the international
registration system under the Madrid Protocol would
promote a harmonious development of economic 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.

The European Commission should be authorised to
represent the European Community in the Assembly of
the Madrid Union after the accession of the Community
to the Madrid Protocol. The European Community will
not express a view in the Assembly in matters relating
solely to the Madrid Agreement.

competence of

The
the European Community to
conclude or accede to international agreements or trea-
ties does not derive only from explicit conferral by the
Treaty but may also derive from other provisions of the
Treaty and from acts adopted pursuant to those provi-
sions by Community institutions.

(12)

This Decision does not affect the right of the Member
the Madrid
States to participate in the Assembly of
Union with regard to their national trade marks,

HAS DECIDED AS FOLLOWS:

Article 1

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),
is
hereby approved on behalf of the Community with regard to
matters within its competence.

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

Article 2

The President of

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

The declarations and notification, which are attached to

2.
this Decision, shall be made in the instrument of accession.

Article 3

The Commission is hereby authorised to represent the
1.
European Community at the meetings of the Madrid Union
Assembly held under the auspices of the World Intellectual
Property Organisation.

On all matters within the sphere of competence of the
2.
Community with regard to the Community trade mark, the
Commission shall negotiate in the Madrid Union Assembly on
behalf of the Community in accordance with the following
arrangements:

(a) the position which the Community may adopt within the
Assembly shall be prepared by the relevant Council
working party or,
if this is not possible, at on-the-spot
meetings convened in the course of the work within the
framework of the World Intellectual Property Organisation;

(b) as regards decisions involving the amendment of Regula-
tion (EC) No 40/94, or of any other act of the Council
the Community position shall be
requiring unanimity,
adopted by the Council acting unanimously on a proposal
from the Commission;

(c) as regards other decisions affecting the Community trade
mark, the Community position shall be adopted by the
Council acting by a qualified majority on a proposal from
the Commission.

Done at Luxembourg, 27 October 2003.

For the Council

The President

A. MATTEOLI