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The OHIM
and the Madrid Protocol
The
Madrid Protocol is an essential instrument in trade mark
protection around the world. It is an international
registration system administered by the World
Intellectual Property Organization (WIPO -
http://www.wipo.org/)
From 1 October 2004, as a
consequence of the accession of the EC to the Madrid
Protocol, trade mark owners will benefit from two new
options:
1. Extend CTM protection internationally. A CTM
application or a registered CTM can be used as the basic
mark for an international application
a-
The international application can be made using the
MM2 form provided by WIPO
http://www.wipo.int/madrid/en/forms/index.htm or
using the form provided by OHIM
http://oami.europa.eu/en/mark/madrid/forms.htm.
The international application can be in any of the
official languages of the European Union.
A Madrid Protocol language must be indicated
(French, English or Spanish) which will be the
language of the international application;
b- The international application
can be based on a registered Community trade mark or
an application for a Community trade mark;
c- The international application must be filed
directly at the OHIM by the trade mark owner or its
representative;
d- The CTM owner or applicant
must be 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;
e- A transmittal fee of 300 must be paid together
with the international application;
The fees relating to international
applications must be paid directly to WIPO
(for further information on payments to WIPO, please
see:
http://www.wipo.int/madrid/en/fees/about_fees.html).
Any payments sent to the OHIM will be returned to
applicants.
f-
The OHIM verifies the content and completeness of
the international application;
g- The OHIM then electronically forwards the
international application to the WIPO International
Bureau.
Furthermore, the OHIM must notify the WIPO
International Bureau of any relevant changes that affect
the CTM during the dependency period (five
years following the date of the international
application).
2. Designate the European Community in an International
Application
WIPO
registers the international application and then
electronically notifies the OHIM of the designation of
the European Community.
This notification triggers an 18-month time limit within
which the OHIM must notify any provisional refusal of
protection based on absolute grounds or relative grounds
to WIPO.
The designation of the European Community has the same
effect as applying for a Community trade mark.
Examination carried out by the OHIM:
1.
Immediately after reception, the OHIM automatically
republishes the international registration in the CTM
Bulletin in a new part M dedicated solely to
international registrations (see
Vademecum).
An international application
designating the EC must contain the indication of a
second language, chosen from the OHIM languages
(Spanish, German, English, French and Italian). If a
second language is not chosen, the OHIM will object to
the application and will postpone the republication
until the second language is available.
The individual fee charged for an international
application designating the EC is, in the case of an
individual CTM, 2229 SFR (up to three classes) +
461 SFR per additional class fee. If the
designation is refused, the OHIM will refund the amount
corresponding to the registration fee (850 + 150
additional class fee).
2. The seniority claims and searches
are dealt with in a parallel procedure.
Seniority
of prior registration can be claimed in a separate
official form (MM17) to be annexed to the international
application. Seniority is examined based on the
documents that are provided by the applicant.
Following republication, the international application
is sent for search. The search is exactly the same as
for CTMs: the OHIM makes the search in the CTM register
and in the international register, informing the holder
of earlier CTMs and sends the designation for search in
the national registers (after 2008 the national search
will become optional).
3. Absolute grounds for refusal and
opposition procedure.
Absolute grounds
examination:
The examination for absolute
grounds starts immediately after republication.
If there is an
absolute ground for refusal, the OHIM must
send, within 6 months following the republication, a
notice of provisional refusal to WIPO.
If the
holder of the international registration is not
domiciled in the EC, he will be requested to appoint
an EC representative. If no representative is
appointed, a final refusal decision is issued by
OHIM.
The first communication is sent to the holder via
WIPO. Then, the communication channel is directly
established between OHIM and the holder or his
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 decision is final, a final
notification is sent to WIPO.
If there are no absolute grounds for refusal,
the Office will issue a first statement of grant of
protection to WIPO. This statement has only an
informative effect and is transmitted to the holder
before being published in the International Gazette
and entered in the International Register.
Relative grounds
examination:
Opposition notices may be filed between the sixth
month and the ninth 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,
the OHIM will verify its admissibility and then
notify WIPO with a provisional refusal based on
opposition. The Office will process the opposition
and at the end of the opposition procedure (after
appeals) will inform WIPO of its final outcome: the
protection is refused or accepted for part or all
goods and services.
If no opposition is
filed:
if a first statement of grant of protection was
sent, a statement of grant of protection is notified
to WIPO. If there is an objection on absolute
grounds for refusal pending, the statement of grant
of protection is not sent.
Third party observations:
These are possible from republication until the end
of the opposition procedure, but not later than 18
months. If the Office raises serious doubts, a
notice of provisional refusal is notified to WIPO.
They are processed in the normal way.
4.
When the international registration has been accepted
for the European Community, it is published in the CTM
Bulletin. The date of the second publication is the
starting point from which the designation of the
European Community acquires the effects of a registered
Community trade mark, and is the relevant date for the
five years use period.
If the designation of the European Community fails to be
accepted by OHIM it is possible to convert it into:
- trade mark applications for EU Member States,
- designations of EU Member States party to the Madrid
Protocol.
Communications of the President
Sources
European Legislation
WIPO
Legislation
Other
WIPO links
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