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WIPO, EC and OHIM to Host an International Conference on the Accession of the European Community to the International Trademark System

Geneva, September 28, 2004
Media Alerts MA/2004/15

An international conference organized by the World Intellectual Property Organization (WIPO), the Office for Harmonization in the Internal Market (Trademarks and Designs) (OHIM) and the European Commission to review the interface between the Madrid Protocol for the International Registration of Trademarks and the Community Trademark System (CTM) will be held at WIPO's Geneva headquarters on October 7. 2004. The link between the Madrid Protocol and the CTM offers trademark owners maximum flexibility in the process of obtaining international trademark protection.

This one-day event is of particular significance in the wake of the recent accession of the European Community to the Madrid Protocol on October 1, 2004, an international treaty that greatly facilitates the process of obtaining trademark protection in multiple countries.

In addition to considering the practicalities of the new enhanced arrangements resulting from the accession of the EC to the Madrid Protocol, the Conference will outline the implications for trademark owners and their trademark strategies.

From October 1, 2004, the date on which EC membership to the Madrid Protocol takes effect, trademark owners from member countries of the Madrid Protocol will be able to designate the EC in their application for international trademark registration. If protection is not refused by the EC's trademark office, OHIM, protection of the trademark will be effective in all 25 EC member states as if it had been applied for or registered directly with OHIM. Trademark owners will also be able to use a trademark application filed or registered at OHIM as the basis for an international application under the Madrid Protocol.

Speakers will include senior officials from WIPO, OHIM and the EC as well as a number of industry representatives. The program also features a roundtable discussion that will examine implications of the EC's accession from a business perspective.

The Conference will be held at the WIPO headquarters, 34, chemin des Colombettes, 1211 Geneva 20, Switzerland. Simultaneous interpretation will be available in English, French and Spanish.

Background:

Under the Madrid Protocol, one of two treaties governing the Madrid System for the International Registration of Trademarks, certain intergovernmental organizations with a regional trademark registration office are able to accede to the treaty. The accession of the EC which takes effect on October 1, 2004, is the first time that the EC has signed up to a WIPO-administered treaty and is also the first accession by an intergovernmental organization, as a bloc, to a WIPO treaty. The EC is the 77th member of the Madrid system.

The accession of the EC to the Madrid Protocol is the third major development in the international trademark system in the past year. The first was the accession of the United States of America to the Madrid Protocol in November 2003 and the second relates to the addition, in April 2004, of Spanish as the third working language of the Madrid system.

Agreement on a series of measures by WIPO member states in September 2003 ensures that the Madrid Protocol and the EC Trademark System (CTM) interact in an efficient and seamless way. These measures, which offer trademark owners maximum flexibility, took effect in April 2004:

  • Under the CTM System, trademark owners holding trademark rights that pre-date the establishment of the CTM system in one or more individual EC member state, are able to incorporate these earlier trademark rights into a CTM registration. When the accession of the EC to the Madrid Protocol takes effect on October 1, 2004, such rights can also be incorporated into international registrations designating the EC.
  • Within the European Community, national trademark registration systems exist in parallel with the CTM System. This means that a trademark owner may choose to register directly with the national trademark office concerned or with OHIM. With the accession of the EC to the Madrid Protocol, either route may also be selected when using the Madrid system. Moreover, in the event that OHIM refuses to grant protection to a trademark that is the subject of an international trademark application under the Madrid Protocol designating the EC, the designation in question can be converted into designations of individual EC member states that are also members of the Madrid system.

For further information, please contact the Media Relations and Public Affairs Section at WIPO:

  • Tel: (+41 22) - 338 81 61 or 338 95 47
  • Fax: (+41 22) - 338 88 10
  • Email: publicinf@wipo.int.
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