In the bad old days, if you wanted international trade mark protection you had to file a separate trade mark application in each country in which you wanted protection. The Madrid Agreement, the prototype scheme for facilitating international protection via a single international application, made things slightly easier. Now the Madrid Protocol has provided a comparatively attractive and easy-to-use system for international trade mark filing. Between the Agreement and the Protocol it is now possible, through a single application, to designate up to 71 countries in which protection is sought. The EU's Community trade mark (CTM), introduced in 1996, also makes it easier to get international protection since a single application can lead to the grant of a unitary trade mark covering 13 jurisdictions and 15 countries (next year 25 countries, after the new batch of entrants gains admittance to the EU. Up to now it has not been possible for a Madrid Protocol applicant to designate the EU and thus secure a CTM through the Protocol route, though the European Commission has proposed to amend the Community Trade Mark Regulation so as to make it Madrid-compatible.

This week UNICE (the Union of Industrial and Employers' Confederations of Europe), AIM (the European Brands Association) and MARQUES (the Association of European Trade Mark Owners) have jointly affirmed their support for the European Commission's proposal, which will enable the EU to accede to the Madrid Protocol. The three organisations are also pressing for full "opt back" provisions to provide that, where an international application that designates the EU fails, the trade mark applicant will be able to convert the failed application into separate national applications that enjoy the same priority date as the original international application.

The IPKat welcomes the European Commission's proposal (which has been on the agenda for years) and looks forward to the EU joining the United States as a fully functional participant in the Madrid Protocol.

Current list of countries adhering to the Madrid Agreement and/or Madrid Protocol here
Madrid Protocol Implementation Act (United States) here
File your Madrid trade mark application here

BRUSSELS GETS CLOSER TO MADRID <strong>BRUSSELS GETS CLOSER TO MADRID</strong> Reviewed by Jeremy on Thursday, September 11, 2003 Rating: 5

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