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Two proposals to link  the Community Trade Mark system with the international
trade   mark  registration   system  of   the  World   Intellectual  Property
Organisation (WIPO)  have been presented by  the European Commission, on  the
initiative of  Single Market Commissioner Mario  MONTI.  The proposals  would
allow companies, with  a single application,  to obtain protection of  a mark
not only  throughout the  EC with a  Community Trade  Mark, but  also in  the
countries which  are members of  the Madrid  Protocol (such  as China).   The
first proposal  relates to  the accession  of the European  Community to  the
Madrid Protocol on  international registration of trade marks and  the second
proposal contains the  necessary provisions to give effect to  that accession
through an amendment of  Council Regulation No  40/94 on the Community  Trade

"These  proposals will  allow  Community firms  to safeguard  valuable  trade
marks with less  bureaucracy while at the same  time encouraging EC companies
to  trade with  third countries in  the knowledge that  their trade marks are
protected",  commented Mr MONTI.   "I  am pleased that  we have  been able to
respond favourably  to requests from  trade mark users  to link the  European
Community trade mark system with  the international system.  I hope that  the
Council will now adopt these proposals as soon as possible".

The Community  Trade Mark  system[1] , which  became fully  operational on  1
April 1996 (see  IP/95/1448), provides for the acquisition of  protection for
marks  with unitary effect for the  whole territory of the European Community
on  the basis of the filing of one  single application for their registration
as  Community trade  marks.  The Office  for  Harmonisation in  the  Internal
Market  (Trade Marks and Designs), which is  located at Alicante (Spain) (the
"Office"), is charged with the administration of Community Trade Marks.

The Protocol  Relating to the  Madrid Agreement Concerning the  International
Registration of Marks ("Madrid  Protocol"), signed in Madrid on 27 June 1989,
also became operational on  1 April 1996.   The Madrid Protocol provides  for
the international registration  of marks at the International Bureau  of WIPO
in Geneva.  

Through the  international registration of a  mark at the WIPO  International
Bureau,  the mark  concerned will in  principle be protected  in any State or
Intergovernmental Organisation which  is a  Contracting Party  to the  Madrid
Protocol and which  has been designated in the application  for international
registration.  The  Madrid Protocol introduces certain new features  into the
system of  international registration of marks  as existing under the  Madrid
Agreement Concerning  the  International Registration  of Marks  of 14  April
1891   (the   "Madrid   Agreement")    and   in   particular   states    that
intergovernmental organisations (such as the  EC), having their own  regional
trade mark system, may adhere to the international registration system.

The system  of international  registration of marks  is not  only simple  but
also encourages international trade.   Instead of a trade mark  holder having
to file a whole series of applications with each of the  national or regional
offices  where the  holder would  like to  protect the  mark, the  holder can
obtain protection in all areas  with a single procedure, administered  by the
national or regional  industrial property office and the International Bureau
of WIPO.   In other words, the Madrid Protocol has the same objectives as the
Community  Trade Mark  system, although  they are  achieved through different

If the  European Community  acceded to  the Madrid  Protocol, industry  could
benefit from  the advantages of the  Community Trade Mark through  the Madrid
Protocol and  vice versa.   In other  words, Community Trade  Mark applicants
and  holders  of  Community  Trade   Marks  could  apply  for   international
protection of their marks through the filing  of an international application
under  the Madrid  Protocol and holders  of international registrations under
the Madrid  Protocol could apply for  protection of their marks  as Community
Trade Marks.  The two  systems are therefore complementary.

So far, nine States  have become parties to  the Madrid Protocol[2] :  China,
Cuba, Denmark, Finland, Germany,  Norway, Spain,  Sweden and United  Kingdom.
However,  it is  expected that  many States  will follow.   According  to the
Agreement on the European Economic Area  signed in Oporto on 2 May  1992, all
EEA Contracting Parties  undertake to adhere  to the Madrid Protocol.   Thus,
in  the foreseeable future, all  the Contracting States  to the EEA Agreement
will participate in the international registration system.   In addition, the
agreements  which have  been  concluded by  the  European Community  and  its
Member States  with the  Central and  Eastern European  countries (CEECs)  as
well  as certain  Republics  of the  former USSR  and other  third countries,
provide that the  third countries  concerned shall  ratify or  adhere to  the
Madrid Protocol.

If the Council  approves the Commission proposals that the  Community accedes
to  the  Madrid Protocol,  it  would  be the  first  time  that the  European
Community adhered to a WIPO Convention.

According to  the Commission  proposal on the  modification of the  Community
Trade  Mark Regulation, international  registrations designating the European
Community shall  be treated  in the  same way as  applications for  Community
Trade Marks  and, after  protection has been  granted to such  registrations,
registered  as  Community Trade  Marks.    This implies,  for  example,  that
international  registrations  designating  the  European  Community  shall be
examined and handled  in the same way  as Community Trade  Mark applications.
Furthermore,  international registrations  designating the European Community
shall  be subject  to  the same  rules  on protection,  use-requirements  and
cancellation as Community trade marks.

[1]       Council  Regulation  (EC) No  40/94  of  20 December  1993  on  the
          Community Trade Mark. OJ No L 11, 14.01.1994.

[2]       Status on 1 January 1996 according to WIPO statistics 1.1.1996.


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