Starting October 1, 2004, the European Union’s Office for Harmonization in the Internal Market ("OHIM") will begin accepting Madrid Protocol trademark applications for international registration. The addition of the European Community ("EC") to the Madrid Protocol brings the total number of Protocol signatory countries to 66. A list of Madrid Protocol member countries is available at http://www.wipo.int/treaties/en/documents/pdf/g-mdrd-m.pdf.
Currently, an eligible trademark owner may file a Community Trademark ("CTM") application, which covers all 25 EC member countries. Note that the EC enlarged from 15 to 25 member countries on May 1, 2004. The current EC member countries are Austria, Benelux (Belgium, the Netherlands and Luxembourg), Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden and the United Kingdom. The United States became a Madrid Protocol member last year. See "Heard the News?," Legal Horizons: Vol II, 2003, available at http://www.jordenburt.com/attachments/27.pdf. Consequently, U.S. trademark owners will be able to designate the EC on a single Madrid Protocol application in order to include all 25 EC member countries, rather than having to designate in the application each individual EC member country that is a signatory to the Madrid Protocol. The individual fee for designating the EC in a Madrid Protocol application will be published when the fee is established under the Madrid Protocol. This fee is expected to be significantly lower than the fee for designating several individual EC member countries that are Madrid Protocol signatories. The cost differential between this fee and the filing fee for a CTM application remains to be seen. Further, U.S. trademark owners may designate the EC on a Madrid Protocol application based upon a U.S. application or registration, and file it through the United States Patent and Trademark Office without having to engage the services of EC counsel. Currently, non-EC entities must retain an EC attorney to file a CTM application with the OHIM.
This article does not constitute legal or other professional advice or services by JORDEN BURT LLP and/or its attorneys.
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