Source: EURLEX
Language: en
Format: md

5 . 10 . 96 EN Official Journal of the European Communities No C 293 / 13

ANNEX

DECLARATION ON THE INDIVIDUAL FEE SYSTEM

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

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

— for an individual mark :

— a designation fee of ECU 2,075 (') plus, where applicable, ECU 400 for each class of goods or

services exceeding three, or, where applicable,

— a renewal fee of ECU 2,500 (') plus, where applicable, ECU 400 for each class of goods or

services exceeding three ;

— for a collective mark :

— a designation fee of ECU 3,875 (') plus, where applicable, ECU 800 for each class of goods or

services exceeding three, or, where applicable,

— a renewal fee of ECU 5,000 (') plus, where applicable, ECU 800 for each class of goods or

services exceeding three .'

(') The said fees are provisional ; they will be diminished by the savings resulting from the international procedure, once

they are known .

PROTOCOL

Relating to the Madrid Agreement Concerning the International Registration of Marks,

adopted at Madrid on 27 June 1989

Article 1

Membership in the Madrid Union

The States party to this Protocol ( hereinafter referred to

as ' the contracting States '), even where they are not
party to the Madrid Agreement Concerning the Inter ­
national Registration of Marks as revised at Stockholm
in 1967 and as amended in 1979 ( hereinafter referred to
as ' the Madrid ( Stockholm ) Agreement '), and the organ ­
izations referred to in Article 14 ( 1 ) ( b ) which are party
to this Protocol ( hereinafter referred to as ' the
contracting organizations ') shall be members of the same
Union of which countries party to the Madrid
( Stockholm ) Agreement are members . Any reference in
this Protocol to ' contracting parties ' shall be construed
as a reference to both contracting States and contracting
organizations .

that application ( hereinafter referred to as ' the basic
application ') or that registration ( hereinafter referred to
as ' the basic registration ') stands may, subject to the
provisions of this Protocol, secure protection for his
mark in the territory of the contracting parties, by
obtaining the registration of that mark in the register of
the International Bureau of the World Intellectual
Property Organization ( hereinafter referred to as ' the
international Registration ', ' the International Register ',
' the International Bureau ' and the ' Organization ',
respectively ), provided that :

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

parties ' shall . be construed office tration of has a contracting been made State by such or where an office the, basic the person regis ­
States and contracting in whose name that application or registration stands

is a national of that contracting State, or is
domiciled, or has a real and effective industrial or
commercial establishment, in the said contracting
Article 2 State ;

Securing protection through international registration

1 . Where an application for the registrtion of a mark
has been filed with the office of a contracting party, or
where a mark has been registered in the register of the

office of a contracting party, the person in whose name

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

office of a contracting organization or where the
basic registration has been made by such an office,
the person in whose name that application or regis ­
tration stands is a national of a State member of that

No C 293 / 14 HEN ] Official Journal of the European Communities 5 . 10 . 96

contracting organization, or is domiciled, or has a
real and effective industrial or commercial estab ­
lishment, in the territory of the said contracting
organization .

2 . The application for international registration ( here ­
inafter referred to as ' the international application ') shall
be filed with the International Bureau through the inter ­
mediary of the office with which the basic application
was filed or by which the basic registration was made

( hereinafter referred to as ' the office of origin '), as the
case may be .

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

as a reference to trade marks and service marks .

4 . For the purposes of this Protocol, ' territory of a
contracting party ' means, where the contracting party is
a State, the territory of that State and, where the
contracting party is an intergovernmental organization,
the territory in which the constituting treaty of that
intergovernmental organization applies .

Article 3

International application

1 . Every international application under this Protocol
shall be presented on the form prescribed by the regu ­
lations . The office of origin shall certify that the
particulars appearing in the international application
correspond to the particulars appearing, at the time of
the certification, in the basic application or basic regis ­
tration, as the case may be . Furthermore, the said office
shall indicate :

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

number of that application ;

( ii ) in the case of a basic registration, the date and

number of that registration as well as the date and
number of the application from which the basic
registration resulted .

The office of origin shall also indicate the date of the
international application .

2 . The applicant must indicate the goods and services
in respect of which protection of the mark is claimed and
also, if possible, the corresponding class or classes
according to the classification established by the Nice
Agreement Concerning the International Classification
of Goods and Services for the Purposes of the Regis ­

tration of Marks . If the applicant does not give such
indication, the International Bureau shall classify the
goods and services in the appropriate classes of the said
classification . The indication of classes given by the
applicant shall be subject to control by the International
Bureau, which shall exercise the said control in
association with the office of origin . In the event of
disagreement between the said office and the Inter ­
national Bureau, the opinion of the latter shall prevail .

3 . If the applicant claims colour as a distinctive
feature of his mark, he shall be required :

( i ) to state the fact, and to file with his international

application a notice specifying the colour or the
combination of colours claimed ;

( ii ) to append to his international application copies in

colour of the said mark, which shall be attached to
the notifications given by the International Bureau,
the number of such copies shall be fixed by the regu ­
lations .

4 . The International Bureau shall register immediately
the marks filed in accordance with Article 2 . The inter ­

national registration shall bear the date on which the
international application was received in the office of
origin, provided that the international application has
been received by the International Bureau within a
period of two months from that date . If the international
application has not been received within that period, the
international registration shall bear the date on which the
said international application was received by the Inter ­
national Bureau . The International Bureau shall notify
the international registration without delay to the offices
concerned . Marks registered in the International Register
shall be published in a periodical gazette issued by the
International Bureau, on the basis of the particulars
contained in the international application .

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

Article 3 ( a )

Territorial effect

The protection resulting from the international regis ­
tration shall extend to any contracting party only at the
request of the person who files the international

5 . 10 . 96 EN Official Journal of the European Communities No C 293 / 15

application or who is the holder of the international without it being necessary to comply with the formalities
registration . However, no such request can be made with prescribed in Section D of that Article .
respect to the contracting party whose office is the office
of origin .

Article 4 ( a )

Article 3 ( b )

Request for ' territorial extension '

1 . Any request for extension of the protection
resulting from the international registration to any
contracting party shall be specially mentioned in the
international application .

2 . A request for territorial extension may also be made
subsequently to the international registration . Any such
request shall be presented on the form prescribed by the
regulations . It shall be immediately recorded by the
International Bureau, which shall notify such recordal
without delay to the office or offices concerned . Such
recordal shall be published in the periodical gazette of
the International Bureau . Such territorial extension shall

be effective from the date on which it has been recorded

in the International Register ; it shall cease to be valid on
the expiry of the international registration to which it
relates .

Replacement of a national or regional registration by an

international registration

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

( i ) the protection resulting from the international regis ­

tration extends to the said contracting party under
Article 3 ( b ) ( 1 ) or ( 2 );

( ii ) all the goods and services listed in the national or

regional registration are also listed in the inter ­
national registration in respect of the said
contracting party ;

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

national or regional registration .
Article 4

Effects of international registration

1 . ( a ) From the date of the registration or recordal

effected in accordance with the provisions of
Articles 3 and 3 ( b ), the protection of the mark in
each of the contracting parties concerned shall be
the same as if the mark had been deposited direct
with the office of that contracting party . If no
refusal has been notified to the International

Bureau in accordance with Article 5 ( 1 ) and ( 2 ) or
if a refusal notified in accordance with the said

Article has been withdrawn subsequently, the
protection of the mark in the contracting party
concerned shall, as from the said date, be the
same as if the mark had been registered by the
office of that contracting party .

( b ) The indication of classes of goods and services

provided for in Article 3 shall not bind the
contracting parties with regard to the determi ­
nation of the scope of the protection of the mark .

2 . Every international registration shall enjoy the right
of priority provided for by Article 4 of the Paris
Convention for the Protection of Industrial Property,

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

Article 5

Refusal and invalidation of effects of international regis ­

tration in respect of certain contracting parties

1 . Where the applicable legislaton so authorizes, any
office of a contracting party which has been notified by
the International Bureau of an extension to that

contracting party, under Article 3 ( b ) ( 1 ) or ( 2 ), of the
protection resulting from the international registration
shall have the right to declare in a notification of refusal
that protection cannot be granted in the said contracting
party to the mark which is the subject of such extension .
Any such refusal can be based only on the grounds
which would apply, under the Paris Convention for the
Protection of Industrial Property, in the case of a mark
deposited direct with the office which notifies the
refusal . However, protection may not be refused, even
partially, by reason only that the applicable legislation
would permit registration only in a limited number of
classes or for a limited number of goods or services .

No C 293 / 16 EN Official Journal of the European Communities 5 . 10 . 96

2 . ( a ) Any office wishing to exercise such right shall date is the same as or is later than the effective
date of the declaration .

notify its refusal to the International Bureau,
together with a statement of all grounds, within
the period prescribed by the law applicable to that
office and at the latest, subject to subparagraphs

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

3 . The International Bureau shall, without delay,
transmit one of the copies of the notification of refusal
to the holder of the international registration . The said
holder shall have the same remedies as if the mark had

been deposited by him direct with the office which has
notified its refusal . Where the International Bureau has
received information under paragraph 2 ( c ) ( i ), it shall,
without delay, transmit the said information to the
holder of the international registration .

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

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

6 . Invalidation, by the competent authorities of a
contracting party, of the effects, in the territory of that
contracting party, of an international registration may
not be pronounced without the holder of such inter ­
national registration having, in good time, been afforded
the opportunity of defending his rights . Invalidation shall
be notified to the International Bureau .

Article 5 ( a )

Documentary evidence of legitimacy of use of certain

( b ) and ( c ), before the expiry of one year from
the date on which the notification of the

extension referred to in paragraph 1 has been sent
to that office by the International Bureau .

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

( c ) Such declaration may also specify that, when a

refusal of protection may result from an
opposition to the granting of protection, such
refusal may be notified by the office of the said
contracting party to the International Bureau after
the expiry of the 18-month time limit . Such an
office may, with respect to any given international
registration, notify a refusal of protection after
the expiry of the 18-month time limit, but only if :

( i ) it has, before the expiry of the 18-month time

limit, informed the International Bureau of
the possibility that oppositions may be filed
after the expiry of the 18-month time limit,
and

( ii ) the notification of the refusal based on an

opposition is made within a time limit of not
more than seven months from the date on
which the opposition period begins ; if the
opposition period expires before this time
limit of seven months, the notification must
be made within a time limit of one month

from the expiry of the opposition period .

( d ) Any declaration under subparagraphs ( b ) or ( c ) Documentary
elements of the mark

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

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

5 . 10 . 96 EN Official Journal of the European Communities No C 293 / 17

Article 5 ( b ) invalidation of the registration resulting from the
basic application or of the basic registration ; or
Copies of entries in international register ; searches for

anticipations ; extracts from International Register

( iii ) an oppositon to the basic application

1 . The International Bureau shall issue to any person
applying therefor, upon the payment of a fee fixed by
the regulations, a copy of the entries in the International
Register concerning a specific mark .

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

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

Article 6

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

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

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

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

2 . Upon expiry of a period of five years from the date Article 7
of the international registration, such registration shall
become independent of the basic application or the regis ­ Renewal of
tration resulting therefrom, or of the basic registration,
as the case may be, subject to the following provisions .

Renewal of international registration

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

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

2 . Renewal may not bring about any change in the
international registration in its latest form .

some of the goods and services listed in the international 3 . Six months before the expiry of the term of
registration . The same applies if : protection, the International Bureau shall, by sending an

unofficial notice, remind the holder of the international
registration and his representative, if any, of the exact
( i ) an appeal against a decision refusing the effects of date of expiry .

the basic application ;

( ii ) an action requesting the withdrawal of the basic

application or the revocation, cancellation or

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

No C 293 / 18 fENl Official Journal of the European Communities 5 . 10 . 96

Article 8

Fees for international application and registration

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

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

( i ) a basic fee ;

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

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

( iii ) a complementary fee for any request for extension

of protection under Article 3 ( b ).

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

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

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

7 . ( a ) Any contracting party may declare that, in
connection with each international registration in
which it is mentioned under Article 3 ( b ), and in
connection with the renewal of any such inter ­
national registration, it wants to receive, instead
of a share in the revenue produced by the
supplementary and complementary fees, a fee
( hereinafter referred to as ' the individual fee ')
whose amount shall be indicated in the

declaration, and can be changed in further

. declarations, but may not be higher than the

equivalent of the amount which the said
contracting party 's office would be entitled to
receive from an applicant for a 10-year regis ­
tration, or from the holder of a registration for a

10-year renewal of that registration, of the mark
in the register of the said office, the said amount
being diminished by the savings resulting from the
international procedure . Where such an individual
fee is payable,

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

( ii ) no complementary fee referred to in
paragraph 27 ( iii ) shall be payable in respect
of any contracting party which has made a
declaration under this subparagraph .

( b ) Any declaration under subparagraph ( a ) may be

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

date of the declaration .

5 . The amounts derived from the supplementary fees Article 9
provided for in paragraph 2 ( ii ) shall be divided, at the Recordal of change in the
expiry of each year, among the interested contracting

registration

parties in proportion to the number of marks for which
protection has been applied for in each of them during
that year, this number being multiplied, in the case of At the request of the person in
contracting parties which make an examination, by a national registration stands, or
coefficient which shall be determined by the regulations . interested office made ex officio

Recordal of change in the ownership of an international

registration

At the request of the person in whose name the inter ­
national registration stands, or at the request of an
interested office made ex officio or at the request of an

5 . 10 . 96 EN Official Journal of the European Communities No C 293 / 19

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

Article 9 ( a )

( ii ) that the whole of their respective territories shall be

deemed to be a single State for the purposes of the
application of all or part of the provisions preceding
this Article as well as the provisons of Articles 9 ( d )
and 9 ( e ).

2 . Such notification shall not take effect until three

months after the date of the communication thereof by
the Director General to the other contracting parties .

Recordal of certain matters concerning an international Article 9 ( d )

registration

The International Bureau shall record in the Inter ­

national Register :

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

the international registration ;

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

the international registration and any other relevant
fact concerning such representative ;

( iii ) any limitation, in respect of all or some of the

contracting parties, of the goods and services listed
in the international registration ;

( iv ) any renunciation, cancellation or invalidation of the

international registration in respect of all or some of
the contracting parties ;

( v ) any other relevant fact, identified in the regulations,

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

Article 9 ( b )

Fees for certain recordals

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

Transformation of an international registration into
national or regional applications

Where, in the event that the international registration is
cancelled at the request of the office of origin under
Article 6 ( 4 ), in respect of all or some of the goods and
services listed in the said registration, the person who
was the holder of the international registration files an

application for the registration of the same mark with
the office of any of the contracting parties in the
territory of which the international registration had
effect, that application shall be treated as if it had been
filed on the date of the international registration
according to Article 3 ( 4 ) or on the date of recordal of
the territorial extension according to Article 3 ( b ) ( 2 )
and, if the international registration enjoyed priority,
shall enjoy the same priority, provided that :

( i ) such application is filed within three months from

the date on which the international registration was
cancelled ;

( ii ) the goods and services listed in the application are

in fact covered by the list of goods and services
contained in the international registration in respect
of the contracting party concerned ; and

( iii ) such application complies with all the requirements

of the applicable law, including the requirements
concerning fees .

Article 9 ( e )

Article 9 ( c ) Safeguard of the Madrid ( Stockholm ) Agreement

Common office of several contracting States

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

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

national office of each of them, and

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

effect in the territory of any other State that is also party
to both this Protocol and the Madrid ( Stockholm )
Agreement .

No C 293 / 20 [ EN ] Official Journal of the European Communities 5 . 10 . 96

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

Article 10

Assembly

1 . ( a ) The contracting parties shall be members of the

same Assembly as the countries party to the
Madrid ( Stockholm ) Agreement .

( b ) Each contracting party shall be represented in that

Assembly by one delegate, who may be assisted by
alternate delegates, advisors, and experts .

( c ) The expenses of each delegation shall be borne by

the contracting party which has appointed it,
except for the travel expenses and the subsistence
allowance of one delegate for each contracting
party, which shall be paid from the funds of the
Union .

2 . The Assembly shall, in addition to the functions
which it has under the Madrid ( Stockholm ) Agreement,
also :

( i ) deal with all matters concerning the implementation

of this Protocol ;

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

( iii ) adopt and modify the provisions of the regulations

concerning the implementation of this Protocol ;

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

3 . ( a ) Each contracting party shall have one vote in the

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

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

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

( c ) Notwithstanding the provisions of subparagraph

( b ), if, in any session, the number of the members
of the Assembly having the right to vote on a
given matter which are represented is less than
one-half but equal to or more than one-third of
the members of the Assembly having the right to
vote on that matter, the Assembly may make
decisions but, with the exception of decisions
concerning its own procedure, all such decisions
shall take effect only if the conditions set forth
hereinafter are fulfilled . The International Bureau

shall communicate the said decisions to the

members of the Assembly having the right to vote
on the said matter which were not represented
and shall invite them to express in writing their
vote or abstention within a period of three
months from the date of the communication . If, at
the expiry of this period, the number of such
members having thus expressed their vote or
abstention attains the number of the members
which was lacking for attaining the quorum in the
session itself, such decisions shall take effect
provided that at the same time the required
majority still obtains .

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

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

cast .

( e ) Abstentions shall not be considered as votes .

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

of, one member of the Assembly only .

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

Article 11

International Bureau

1 . International registration and related duties, as well
as all other administrative tasks, under or concerning this

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Protocol, shall be performed by the International
Bureau .

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

( b ) The International Bureau may consult with inter ­

governmental and international non-governmental
organizations concerning preparations for such
conferences of revision .

( c ) The Director General and persons designated by

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

3 . The International Bureau shall carry out any other
tasks assigned to it in relation to this Protocol .

Article 12

Finances

As far as contracting parties are concerned, the finances
of the Union shall be governed by the same provisions as
those contained in Article 12 of the Madrid ( Stockholm )
Agreement, provided that any reference to Article 8 of
the said Agreement shall be deemed to be a reference to
Article 8 of this Protocol . Furthermore, for the purposes
of Article 12 ( 6 ) ( b ) of the said Agreement, contracting
organizations shall, subject to a unanimous decision to
the contrary by the Assembly, be considered to belong to
contribution class 1 ( one ) under the Paris Convention
for the Protection of Industrial Property .

Article 13

Amendment of certain articles of the Protocol

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

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

3 . Any amendment to the Articles referred to in
paragraph 1 shall enter into force one month after
written notification of acceptance, effected in accordance
with their respective constitutional processes, have been
received by the Director General from three-fourths of
those States and intergovernmental organizations which,
at the time the amendment was adopted, were members

of the Assembly and had the right to vote on the
amendment . Any amendment to the said Articles thus
accepted shall bind all the States and intergovernmental
organizations which are contracting parties at the time
the amendment enters into force, or which become
contracting parties at a subsequent date .

Article 14

Becoming party to the Protocol ; entry into force

1 . ( a ) Any State that is a party to the Paris Convention

for the Protection of Industrial Property may
become party to this Protocol .

( b ) Furthermore, any intergovernmental organization

may also become party to this Protocol where the
following conditions are fulfilled :

( i ) at least one of the members States of that

organization is a party to the Paris
Convention for the Protection of Industrial

Property ;

( ii ) that organization has a regional office for the

purposes of registering marks with effect in
the territory of the organization, provided
that such office is not the subject of a notifi ­
cation under Article 9 ( c ).

2 . Any State or organization referred to in paragraph

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

3 . The instruments referred to in paragraph 2 shall be
deposited with the Director General .

4 . ( a ) This Protocol shall enter into force three months

after four instruments of ratification, acceptance,
approval or accession have been deposited,
provided that at least one of those instruments has
been deposited by a country party to the Madrid
( Stockholm ) Agreement and at least one other of
those instruments has been deposited by a State
not party to the Madrid ( Stockholm ) Agreement
or by any of the organizations referred to in
paragraph 1 ( b ).

( b ) With respect to any other State or organization

referred to in paragraph 1, this Protocol shall
enter into force three months after the date on
which its ratification, acceptance, approval or
accession has been notified by the Director
General .

No C 293 / 22 EN Official Journal of the European Communities 5 . 10 . 96

5 . Any State or organization referred to in paragraph

1 may, when depositing its instrument of ratification,
acceptance or approval of, or accession to, this Protocol,
declare that the protection resulting from any inter ­
national registration effected under this Protocol before
the date of entry into force of this Protocol with respect
to it cannot be extended to it .

Article 15

Denunciation

1 . This Protocol shall remain in force without limi ­

tation as to time .

2 . Any contracting party may denounce this Protocol
by notification addressed to the Director General .

3 . Denunciation shall take effect one year after the
day on which the Director General has received the
notification .

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

5 . ( a ) Where a mark is the subject of an international

registration having effect in the denouncing State
or intergovernmental organization at the date on
which the denunciation becomes effective, the
holder of such registration may file an application
for the registration of the same mark with the
office of the denouncing State or intergovern ­
mental organization, which shall be treated as if it
had been filed on the date of the international

registration according to Article 3 ( 4 ) or on the
date of record al of the territorial extension
according to Article 3 ( b ) ( 2 ) and, if the inter ­
national registration enjoyed priority, enjoy the
same priority, provided that

( i ) such application is filed within two years
from the date on which the denunciation

became effective ;

( ii ) the goods and services listed in the
application are in fact covered by the list of
goods and services contained in the inter ­
national registration in respect of the
denouncing State or intergovernmental
organization ; and

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

( b ) The provisions of subparagraph ( a ) shall also
apply in respect of any mark that is the subject of
an international registration having effect in
contracting parties other than the denouncing
State or intergovernmental organization at the
date on which denunciation becomes effective and

whose holder, because of the denunciation, is no
longer entitled to file international applications
under Article 2(1 ).

Article 16

Signature ; languages ; depositary functions

1 . ( a ) This Protocol shall be signed in a single copy in

the English, French and Spanish languages, and
shall be deposited with the Director General when
it ceases to be open for signature at Madrid . The
texts in the three languages shall be equally
authentic .

( b ) Official texts of this Protocol shall be established

by the Director General, after consultation with
the interested governments and organizations, in
the Arabic, Chinese, German, Italian, Japanese,
Portuguese and Russian languages, and in such
other languages as the Assembly may designate .

2 . This Protocol shall remain open for signature at
Madrid until 31 December 1989 .

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

4 . The Director General shall register this Protocol
with the Secretariat of the United Nations .

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