WIPO Hosts Conference on Accession of European Community to International Trademark System
Geneva, October 7, 2004
Press Releases PR/2004/398
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) took place at WIPO's Geneva headquarters on October 7. 2004. The link between the Madrid Protocol and the CTM, which became operational on October 1, 2004, following the entry into force of the EC's accession to the Madrid Protocol, offers trademark owners maximum flexibility in the process of obtaining international trademark protection.
In his opening remarks, WIPO Director General, Dr. Kamil Idris, said that the Conference was an "historic event for the European Community, for the Office for Harmonization in the Internal Market, for WIPO and for the trademark community at large" Dr. Idris said "today, we are celebrating a successful endeavor which has culminated in the establishment of an important link between the international trademark system and the regional system of the European Community Trademark. For us this is an outstanding achievement thanks to the constructive and effective contribution of these three organizations" he added. Dr. Idris said that with 77 contracting parties, the evolution and development of the Madrid system was very positive. "The Madrid system offers businesses and market sector interests, a simple, affordable and efficient way of obtaining and retaining the registration of their trademarks," he added.
Ambassador Carlo Trojan, Permanent Representative of the European Commission Delegation in Geneva, welcomed participants and said that although the path to accession was long, a very useful link between the Madrid Protocol and OHIM was finally operational. He said "This is certainly an historic, decisive step forward that will further strengthen our position at the international level and at WIPO. "I hope our accession will serve as an inspiration to other countries" he added. Speaking about the link between the two systems, Ambassador Trojan said "I feel sure that this will be a useful instrument for users offering companies around the world a new alternative to protect trademarks in Europe and in other countries like China, Japan or the USA." Ambassador Trojan noted that one single application will enable a trademark holder to obtain trademark protection in all member countries of the EC as well as in a large number of other countries in the world. He applauded the success of the Madrid Protocol and welcomed the recent endorsement by the WIPO General Assembly of a decision to convene a Diplomatic Conference for the Adoption of a Revised Trademark Law Treaty (TLT) on procedures for the registration and management of trademarks in March 2006.
Mr. Wubbo de Boer, President, OHIM, told participants that the accession of the EC to the Madrid Protocol was a "memorable occasion" with far-reaching ramifications and that thanks to intense cooperation between WIPO and OHIM, it had been possible to implement the new arrangement smoothly. He said that the recent positive developments within the Madrid Protocol and its widening membership were good news for trademark owners interested in Europe. He said that both quantitatively and qualitatively, the Madrid Protocol was a very important mechanism, "we can say that the Madrid Protocol is the place where trademark matters are happening," he added.
The Conference considered the practicalities of the new enhanced arrangements resulting from the accession of the EC to the Madrid Protocol, and outlined the implications for trademark owners and their trademark strategies. A roundtable discussion on implications of the EC's accession from a business perspective also took place.
The accession of the European Community to the Madrid Protocol took effect on October 1, 2004. The consequent link between the international system and the CTM means that trademark owners from member countries of the Madrid Protocol are 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.
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.
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