WIPO Welcomes Accession by European Community to International Trademark System
Geneva, June 30, 2004
Press Releases PR/2004/387
The Director General of the World Intellectual Property Organization (WIPO), Dr. Kamil Idris, has welcomed the accession of the European Community (EC) to the Madrid Protocol, one of the two treaties that govern the international registration of trademarks, offering trademark owners greater flexibility in safeguarding their trademarks.
On the occasion of the EC's accession, Dr. Idris received a European Union (EU) delegation on Tuesday, June 29, 2004 consisting of H.E. Mrs. Mary Whelan, Ambassador and Permanent Representative of Ireland in Geneva, Mr. Carlo Trojan, Ambassador and Permanent Representative of EC in Geneva, and H.E. Mr. Jacques Brodin, Ambassador and Head of the EU Council Liaison Office in Geneva.
"The accession of the European Community marks a milestone in the development of the international trademark system. This important development creates an interface between WIPO's international trademark operations and those of the European Community trademark system, thus offering trademark owners greater flexibility in the process of obtaining international trademark protection", said WIPO Director General, Dr. Kamil Idris. "The Madrid system for the international registration of trademarks offers businesses in all participating countries a simple, affordable and efficient way of obtaining and maintaining their trademarks", the Director General added.
Under the Madrid Protocol, certain intergovernmental organizations with a regional trademark registration office are able to accede to the treaty. This 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.
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, the Office for Harmonization in the Internal Market (Trademarks and Designs) (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.
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. "These developments promise to transform the international trademark registration system into a more inclusive and global system", Dr. Idris said.
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.
The Madrid System for the International Registration of Marks gives trademark owners the possibility of protecting a trademark in several countries by simply filing one application, in one language, with one set of fees in one currency (Swiss francs). It offers a cost-effective and efficient way for trademark holders to ensure protection for their marks in multiple countries through the filing of a single application. An international registration produces the same effects as an application for registration of the mark made in each of the countries designated by the applicant. If protection is not refused by the trademark office of a designated country, the protection of the mark is the same as if it had been registered by that office.
The Madrid system is governed by two treaties: the Madrid Agreement, dating from 1891 and revised several times since then, and the Madrid Protocol, which came into operation in 1996, introducing some new features into the system to address difficulties that had impeded adherence by certain countries. A country may adhere to either the Agreement or to the Protocol or to both. The current membership of the Madrid system (Agreement and Protocol) is 77. The membership is made up as follows: there are 66 members of the Madrid Protocol and 56 members of the Madrid Agreement. Forty-five countries have adhered to both the Agreement and the Protocol, 11 are party to the Agreement only and 20 countries plus the EC have signed up to the Madrid Protocol only.
Trademarks, key components of any successful business marketing strategy, are signs to distinguish the goods or services of one enterprise from those of other enterprises. They also serve as an indication of quality and are of significant and growing economic importance. The protection available by registering a trademark ensures the exclusive right to use it to identify the owner's goods or services, or to authorize another party, usually through a license or franchise, to use it in return for payment.
For further information, please contact the Media Relations and Public Affairs Section at WIPO: Tel: + 41 22 338 8161 or 338 95 47; e-mail: publicinf@wipo.int.