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13. Questions on the Registration of International Marks (Madrid Protocol)


13.1. What is the Madrid Protocol?

13.2. What does the link between the Madrid Protocol and the EU trade mark system mean?

13.3. What is the role of EUIPO?

13.4. What is the role of WIPO?


Chapter 13 A) International Registrations designating the European Union (EU)

13.A.1. Can I designate the EU in an international application?

13.A.2. Will I need a representative?

13.A.3. How much does it cost to designate the EU in an international application?

13.A.4. Which form may I use to designate the EU in an international application or in a subsequent designation?

13.A.5. What is the registration procedure?


Chapter 13 B) International applications based on an EU trade mark

13.B.1. Can I use an EU trade mark as the basis for an international application?

13.B.2. Will I need a representative?

13.B.3. How much does it cost to file an international application?

13.B.4. Which form may I use?

13.B.5. What is the procedure when the EUIPO is used as the Office of Origin?

 

13.1. What is the Madrid Protocol?

The Madrid Protocol for the international registration of marks is a treaty administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva. It has been in operation since April 1996 and has been ratified by many countries around the world, including most European countries, the USA, Japan, Australia, China, Russia and, in October 2004, by the European Union (EU) as such.

The Madrid Protocol gives trade mark owners the possibility of having their trade marks protected in several countries by simply filing one application directly with their own national or regional trade mark office.

 

13.2. What does the link between the Madrid Protocol and the EU trade mark system mean?

Since the European Union's accession to the Madrid Protocol, the European Union trade mark (EUTM) system and the so-called Madrid system are linked — it is now possible either to file an international application based on an EU trade mark or to designate the EU in an international application.

 

13.3. What is the role of EUIPO?

Since EUIPO is the European Union office for the purposes of registering marks with effect across the whole of the European Union (EU), it is the point of contact for WIPO in all international application proceedings based on an EU trade mark or designating the EU. The EUIPO can act either as the office of origin if an international application is based on an EU trade mark, or as the designated office if the EU has been designated in an international application originating elsewhere. EUIPO's role in the international system is similar to the role played by national offices.

 

13.4. What is the role of WIPO?

WIPO, through its International Bureau, administers the Madrid Protocol together with the Madrid Arrangement (the two treaties forming the so-called Madrid System). When receiving an international application from an office of origin, it checks in particular that all the filing requirements are met and that the goods and services are correctly classified. If so, it registers the mark in the International Register and it publishes it in the International Gazette. The International Bureau then notifies the international registration to the Offices of the designated countries.

The International Bureau does not examine whether the mark as such qualifies for protection, or whether an identical or similar mark has already been registered; that is a matter for the Offices of the designated countries.




Chapter 13 A) International Registrations designating the European Union (EU)

13.A.1. Can I designate the EU in an international application?

It is possible to designate the European Union in an international application since the EU has an office (EUIPO) administrating a trade mark valid across the entire territory of the EU. By designating the EU in an international application (or in a subsequent designation), one can obtain a protection with the same effects as a direct EU trade mark application.

 

13.A.2. Will I need a representative?

When the EU is designated in an international application, it is generally not necessary to appoint a representative before EUIPO. Nevertheless, in the case of provisional refusal, or more generally, if the international holder needs to communicate directly with the Office (sending of documents, for example), the normal representation rules apply (see more details on representation).

 

13.A.3. How much does it cost to designate the EU in an international application?

The following amounts of fees (in Swiss francs) must be paid:

Where the mark is an individual mark

 

For the first class

897

For the second class

55

For each additional class

164

Where the mark is a collective mark

 

For the first class

1 531

For the second class

55

For each additional class

164


 

13.A.4. Which form may I use to designate the EU in an international application or in a subsequent designation?

To file an international application, it is compulsory to use one of the two following forms:

EM2 form in one of the 23 official languages of the EU, available in two different versions:

  • the first version is for applications made in one of the three Protocol languages (French, Spanish or English)
  • the second one is for applications made in other EU languages

WIPO MM2 form in English, French or Spanish

We recommend using EUIPO-adapted versions of WIPO forms.

 

13.A.5. What is the registration procedure?

When the EU is designated in an international registration, EUIPO has the right to refuse protection of a mark within 18 months of receipt of the application from WIPO. Refusal may be made on any of the grounds (absolute and relative) for which an application for registration filed directly with the EUIPO might be refused.

Immediately after receipt, EUIPO automatically republishes the international registration in the EUTM Bulletin in a new Part M dedicated solely to international registrations (see Vademecum).

An international application designating the EU must indicate a second language from the EUIPO's official languages (English, French, German, Italian and Spanish). If a second language is not chosen, EUIPO will object to the application and will postpone the republication until the second language has been duly indicated.

Seniority claims and searches are dealt with in parallel by the EUIPO. Seniority of a prior registration can be claimed using a separate official form (MM17) to be annexed to the international application. The seniority examination is based only on the documents that are provided by the applicant.

Following republication, EUIPO sends out European Union search reports for the international application in exactly the same way as for EU trade mark applications, provided that a request for a search report pursuant to Article 38(1) EU trade mark Regulation is made to the Office within one month of the date of notification The ex officio examination starts immediately after republication.

The examination of formalities is limited to whether the application is for a collective mark, whether there are any seniority claims and whether the list of goods and/or services meets the requirements of clarity and precision as described in Part B.3, Classification. Seniority of a prior registration can be claimed using a separate official form (MM17) to be annexed to the international application.

If there is any ground for refusal, the EUIPO must send a notice of provisional refusal to WIPO within six months of the republication. If the holder of the international registration is not domiciled in the European Economic Area (EEA), he or she will be requested to appoint an EEA representative. If no representative is appointed, the refusal will be confirmed to the extent identified in the provisional refusal. In other words, if the provisional refusal concerned only part of the goods and services, only those goods and services will be refused and the remaining goods and services will be accepted.

The first communication is sent to the holder via WIPO. Thereafter, the communication channel is established directly between the EUIPO and the holder or the holder's representative. If the objection is not overcome, a final decision is sent to the holder. The final decision may be appealed before the Boards of Appeal. Once the appeal procedure has been exhausted and the decision is final, a refusal notification is sent to WIPO.

If there are no grounds for refusal the Office will issue an interim status to WIPO. This statement will be transmitted to the holder before being published in the International Gazette and entered in the International Register.

Opposition notices may be filed within the period of three months beginning one month following the date of republication. Oppositions filed prior to this period will be deemed to have been filed on the first day of the opposition period.

If an opposition is filed, EUIPO will verify its admissibility and then notify WIPO with a provisional refusal based on the opposition proceedings. If the opposition is successful the Office will inform WIPO at the end of the opposition procedure (after appeals) of the refusal.

When all procedures are over and the international registration is accepted for the European Union for all or part of the goods and services, it is republished in the EUTM Bulletin and a statement of grant of protection is sent to WIPO.

If the international registration's designation of the European Union is rejected by the EUIPO it is possible under Article 159 of the EU trade mark Regulation to convert it into:

  • a national trade mark application for EU Member States;
  • a designation of a Member State party to the Madrid Protocol (so-called ‘opting back').



Chapter 13 B) International applications based on an EU trade mark

13.B.1. Can I use an EU trade mark as the basis for an international application?

Yes, since the European Union (EU) has joined the Madrid Protocol, an EU trade mark can serve as a basis for an international application. In that case, the EUIPO will act as office of origin and will certify the identity between the EU trade mark (applied for or registered) and the international application.

 

13.B.2. Will I need a representative?

It is possible to file an international application before the EUIPO under the same conditions of representation as for a direct EU trade marks (more information on representation before the Office).

 

13.B.3. How much does it cost to file an international application?

A EUR 300 fee will have to be paid at the EUIPO when filing the application.
(See more details at WIPO's website).

 

13.B.4. Which form may I use?

The WIPO MM2 form in English, French or Spanish (available at WIPO'S website) or

The EUIPO EM2 form in one of the 23 official languages used at the EUIPO, available in two different versions. The first version of the EUIPO form is for applications made in one of the three languages of the protocol (French, English or Spanish). The second is for applications made in the 20 other languages (both versions of this form are available on the EUIPO's website).

 

13.B.5. What is the procedure when the EUIPO is used as the Office of Origin?

The international application can be based on a registered EU trade mark or on an EU trade mark application. It must be filed directly at the EUIPO by the trade mark's owner or representative. The EUTM owner or applicant must be a national of a country of the European Union or must have a real and effective industrial or commercial establishment or domicile within the European Union.

If the international application is made in an official language of the European Union that is not a language of the Protocol, a Madrid Protocol language must be indicated (English, French or Spanish) which will be the language of the international application. If translation of the goods and services are not provided by the applicant, he or she must authorise the EUIPO to provide them.

The EUIPO verifies the content and completeness of the international application (in particular, the trade marks, the owner and the scope of the list of goods and services).

The international application is then forwarded electronically to the International Bureau of WIPO.

Page last updated 27-06-2016