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DESIGNATION OF THE EU VIA THE MADRID PROTOCOL

DESIGNATION OF THE EU VIA THE MADRID PROTOCOL

The European Union Intellectual Property Office (EUIPO)1 is a member of the Madrid Protocol and so the European Union Trade Mark (EUTM)2 can be designated in an International Registration so as to seek unitary trade mark protection for all the European Union countries

If protection is desired for more than a few European Union countries, then this may well be more economical than national designations, though other considerations may apply.

How does the EUIPO handle the designation?

Unlike, for example, the United Kingdom or the United States, where a designation of that country is treated as far as possible like a nationally filed application, the EUIPO adopts a different system for designations under the Madrid Protocol compared with applications submitted directly to it.

When the EUIPO receives from the World Intellectual Property Organisation (WIPO) the details of the International Registration (assuming that a second language has been indicated for the proceedings before the EUIPO) it will republish the bibliographic details and the class numbers in the EUTM Bulletin; the list of goods and services will not be republished.

After republication which usually takes place very rapidly, the EUIPO will take the following steps:

  • preparation of the search report(s) – note that to be provided with a copy of the search report, a specific request has to be filed;
  • formalities examination, including seniority claims and regulations for use, if applicable;
  • examination of absolute grounds and oppositions.

Objections and opposition

If there is objection on absolute grounds, then the EUIPO will issue a notice to WIPO setting a two month deadline for response. WIPO will forward the notice to the holder.

Responses have to be submitted directly to the EUIPO, via an authorised representative if the holder is not in the European Union.

Correspondence with the EUIPO on the absolute objections is as for a directly filed EUTM application; only the final decision as to whether to accept or refuse the mark will be notified to WIPO.

The designation will be examined on absolute grounds as if it were an EUTM application, with either a provisional refusal (if there are absolute grounds objections) or an Interim Status of the Mark (if there are no absolute grounds objections) being sent to WIPO.

The opposition period is the three month period commencing after the expiry of one month following republication.

If the opposition is found admissible, then a notice of provisional refusal will be sent to WIPO.

The opposition will then follow the same procedure as one filed against a directly filed EUTM application.

Concluding the application process

Four possible scenarios following the application process are given below:

  • No objections on absolute grounds, no oppositions and no third party observations: the Statement of Grant of Protection is sent to WIPO and the second publication takes place – the designation then has the same effect as a directly filed EUTM.
  • Objection on absolute grounds but no oppositions: proceedings continue before the EUIPO until a final decision is reached, at which point a statement is sent to WIPO. If the absolute grounds objection is waived, a Statement of Grant of Protection is sent to WIPO and the second publicationtakes place – the designation then has the same effect as a directly filed EUTM.
  • Opposition filed but no objection on absolute grounds: on final opposition decision a statement is sent to WIPO indicating the outcome; if the opposition is rejected in whole or in part then second publication takes place – the designation then has the same effect as a directly filed EUTM (with a narrowed down specification if the opposition has been partially successful).
  • If there is both opposition and objection on absolute grounds, then the opposition proceeds only as far as being examined on admissability, with the opposition proceedings then being stayed until a final decision is reached on the absolute grounds objection.

If the objection on absolute grounds is confirmed, then a statement is sent to WIPO and the opposition proceedings are closed and the opposition fee is refunded. If the objection on absolute grounds is reversed, the opposition proceedings then recommence; on final opposition decision a statement is sent to WIPO indicating the outcome; if the opposition is rejected in whole or part then second publication takes place – the designation then has the same effect as a directly filed EUTM.

Conversion

If the EU designation is withdrawn, refused or ceases to have effect, it can be converted to national designations under the Madrid Protocol for the countries not giving rise to the refusal (except for Malta, which is not in the Madrid Protocol and so would need to be converted to a national application). If  conversion is for a number of countries, this will be less costly than the other option of converting into nationally filed applications (which would be the only option for the conversion of a failed directly filed EUTM).  Conversion needs to be applied for within three months of the withdrawal or the ceasing to have effect of the EU designation or of a refusal becoming final.

1 previously known as OHIM
2 previously known as Community Trade Mark (CTM)

This information is simplified and must not be taken as a definitive statement of the law or practice.

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