MACT/I/2 APPENDIX. I. Introduction

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1 MACT/I/2 APPENDIX POSSIBLE M.EASURES TO BE TAKEN WITH A VIEW TO ESTABLISHING LINKS BETWEEN THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS AND THE PROPOSED REGULATION OF THE COUNCIL OF THE EUROPEAN COMMUNITIES ON THE COMMUNITY TRADE-MARK I. Introduction l. The Assembly and the Committee of Directors of the Madrid Union for t he International Registration of Marks decided in their eleventh session (November 1981} that the Director General of WIPO should convene a working group consisting of representatives of the States members of the Mad r id Uni on and of the States members of the European Communities not members of the Madrid Union in order to study ways and means so that the future Community trade- mark Regulation should be compatible with the Madrid Agreement (and a l so with the Trademark Registration Treaty) and so that, in particular, any Community trade-mark registration (hereinafter referred to also as "Community registration"} could (possibly after the corresponding amendment of the Regulations under the Madrid Agreement) serve as a basis of an international registration under the Madrid Agreemen t (hereinafter referred to as "international registration"}, and any international registration could have the same effect in respect of a Community trade-mark as it has, today, in respect of national marks of countries members of the Madrid Union (see document MM/A/XI/2, paragraphs 6 and 8}. 2. This document contains proposals for possible measures to be taken in order to ensure that any international registration could have the effect of a Community registration and that any Community registration could serve as a basis for an international registration. In order to achieve this objective, it is suggested to revise the Regulations under the Madrid Agreement as shown in Annex I. Moreover, the competent services of the Commission of the European Communities have informed the International Bureau that they consider that, if the matter is dealt with in this way, an amendment of the proposed Community Trade Mark Regulation will be called for, of which a preliminary draft text is set out in Annex II. A. General II. Explanations 3. The draft provisions contained in Annex I would cover all regional systems of registration of trademarks in respect of which the applicant has a choice, for any given mark, between national registration and regional registration or between national registration and national registration plus regional registration. Thus, those provisions would apply not only to the Community registration but also to other regional registration systems which fulfill the above-mentioned condition. I B. International Registration as Basis for Community Registration 4. In order to ensure the effect of an international registration in respect of a Community registration, the Regulations under the Madrid Agreement would have to be revised in order to take into account optional ~egional systems of reqistration such as the future Community trade-mark system (see the proposed Rule 30bis}. Thus, the applicant would be able to obtain, in respect of the countries-of the Madrid Union which are members of the European Commun i ties, a regional registration effect (proposed Rule 30ter(l) and (2)). In this connection, it is to be noted that Article 9quater of the Madrid Agreement already provides for regional off ices. However, since a Community registration cannot be limited to some of the member States of the European ~.

2 MACT/ I / 2 Appendix, page 2 Communi ties, proposed Rule 30ter (3) would extend the effect of the international registration to the Community as a whole (including countries of the Community which are not members of the Madrid Union). The procedure by the International Bureau and the Community Trade-Mark Office (hereinafter referred to as "the Community Office") would be governed by the general provisions of the Madrid Agreement and its Regulations (see proposed Rule 30quinquies), subject to a special provision concerning fees (see proposed Rule 30sexies), in accordance with which applicants for international registratton choosing the effect of a Community registration would have to pay complementary fees for each of the--at present ten--member countries of the Community (however, in accordance with Article 9quater of the Madrid Agreement, counting the three Benelux countries as one country) and in accordance with which the Community Office would be entitled to a share in the surplus of the annual returns and in the amounts of supplementary fees and complementary fees which would correspond to the number of Community countries (here again, subject to Article 9quater of the Madrid Agreement). The said provision would mean that an applicant for international registrati'on who requests the effect of registration by the Community Office would have to pay, taking into account the present membership of the Community and of the Madrid Union, respectively, eight complementary fees for territorial extension (the three Benelux countries counting as one country in accordance with Article 9quater of the Madrid Agreement), i.e. eight times 58 Francs 464 Francs, whereas the Community Office, in the distribution of the comolementary fees, would probably receive more than 464 Francs since, under the proposed Regulation, the coefficient referred to in Rule 30 of the Requlations under the Madrid Agreement would be three (in 1980, countries with coefficient three received about 65 Francs for a territorial extension for which the apolicant had to pay 58 Francs). '>. The orovisions containing the suggested, and required, implementation of this scheme in respect of the Community trademark procedure could be embodied, as suggested, in a new Article 85bis of the proposed Community Regulation. That Article would make, in its paragraph (1) (b), use of an option under the Madrid Agreement in respect of the time limit for refusal of protection. Inclusion of a provision in the Office Instructions might be considered, which would ensure publication under Article 31(4) in time so that any oppositions would reach the Community Off ice before it has to decide on a refusal of protection. C. Community Registration as Basis for International Registration 6. In the proposed Rule 30quater, the Regulations under the Madrid Agreement would ensure that any national or domiciliary of any country of the European Communities (including countries not member of the Madrid Union) or any person having a real and effective industrial or commercial establishment in such a country could file an application for international registration on the basis of a Community registration, provided that the whole of the territories of the countries of the European Communities can be considered as a country of origin in accordance with the principles laid down in Article 1(3) of the Madrid Agreement; the latter proviso takes into account the fact that not all the member countries of the European Communities are members of the Madrid Union. 7. As reqards the proposed Com:nunity Regulation, the provisions containing the suggested, and required, implementation of this scheme in respect of the Community trademark procedure could be embodied, as suggested, in oaragraph (2) of the new Article 85bis. Paragraph (2) (a), whose final wording would deoend on the decision to~e taken with respect to the official lanquage(s) of the Community Office, could permit filing of applications for international registration in English or French (an amendment in Rule 2 of the Regulations under the Madrid Agreement would provide for the possibility of using either English or French, see paragraph 8, below); if only one of those tv1o languages were to be the official language of the Community Office, the said oaragraph could be changed accordingly; moreover, the said paragraph would provide for a handling f e e in acco rdance with Article 8(1) of the Madrid Agreement. Of particular importance would be the accelerated registration procedure under Article 85b i s (2) ( b ) which would greatly facilitate the use of a Community r egistration thus obtained for the purposes of international registration.

3 MACT/I/2 Appendix, page 3 D. Languages under the Madrid Agreement 8. In view of the fact that the proposed scheme would make the system of international registration available to applicants from English- speaking countries members of the Community, it appears appropriate to admit, in addition to French, English as a language for proceedings under the Madrid Agreement. This would be achieved by amending Rule 2 of the Regulations under the Madrid Agreement as shown in Annex I. [Annexes follow)

4 MACT/I/2 ANNEX I TO THE APPENDIX DRAFT AMENDMENTS TO THE REGULATIONS UNDER THE MADRID AGREEMENT Rule 2 Languages (1) Applications for international registration shall be made in English or French. (2) All communications concerning an application registration or concerning the international registration application shall be in the language used in the application. for international effected on such (3) The periodical referred to in Rule 26 shall be in English and French. CHAPTER 9BIS REGIONAL SYSTEM OF REGISTRATION PERMITTING A CHOICE BETWEEN REGIONAL AND NATIONAL REGISTRATION For the purposes of this Chapter Rule 30bis Definitions (i) "optional regional system of registration" means a system of registration of marks having effect in two or more countries of which two at least are countries of the Special Union, provided that such system permits the applicant to choose, in respect of any mark, between a registration und.er the regional system and national registrations in the respective countries or to obtain, in respect of any mark, both kinds of registrations, (ii) "regional Office" means an office which has been entrusted with the administration of an optional regional system of registration, (iii) "regional registration" means a registration of a mark effected by a regional Office.

5 MACT/I/2 Annex I to the Appendix page 2 Rule 30ter Effect of Regional Registration under the Agreement (1) Any request for territorial extension relates to a country of the Special Union to which of registration applies may specify that the registration is chosen instead of, or in addition registrations. under Article 3ter which an optional regional system effect of the regional to, the effect of national {2) In the case of such a choice, the international registration under Article 4 shall, subject to paragraph {3), have, instead of, or in addition to, the effect of a national registration, the effect of a.regional registration for the country or countries in respect of which the effect of the regional registration has been requested, unless the regional Office refuses the protection in accordance with Article 5. (3) Where the said choice concerns a regional registration whose' effect under the optional regional system of registration automatically extends to all the countries to which the said regional system applies, it shall be deemed as relating to all those countries even if it specifies less than all of them. Rule 30quater Regional Registration as Basis of International Registration Any regional registration of a mark shall be considered, for the purposes of Article 1{2) of the Agreement, as a national registration in a country of the Special Union, provided that the owner of the regional registration is a national of a country to which the optional regional system of registration applies or, if he is not a national of such a country, that he is domiciled or has a real and effective industrial or commercial establishment in such a country and provided further that, for the purposes of Article 1 {3) of the Agreement, the whole of the territories of the countries party to the optional regional system shall be considered as a country of the Special Union. Rule 30quinquies Regional Office Subject to Rule 30sexies, the competent regional Office shall, in respect of applications for international registration and international registrations to which this Chapter applies, have the same rights and obligations under the Agreement and these Regulations which otherwise national Offices have, and the International Bureau shall have the same obligations and rights vis-a-vis any regional Office as it has vis-a-vis national Offices. I ~

6 MACT/ I / 2 Annex I to the Appendix page 3 Rule 30sexies Fees For the purposes of Article 8 (2) (c), (4), (5) and (6) of the Agreement each application for international registration choosing the effect of the regional registration and each international registration effected upon such an application shall be considered as relating to as many countries as there are countries in which the regional registration is chosen to have effect or has effect, provided that, where Article 9quater of the Agreement applies, the number of the countries shall be reduced accordingly. [End of Annex I1 Annex II follows] ~. ~

7 MACT/I/2 ANNEX II TO THE APPENDIX PRELIMINARY DRAFT TEXT of a Possible Amendment to the Community Trade Mark Regulation prepared by the competent services of the Commission of the European Communities in Consultation with the International Bureau of WIPO TITLE XIbis RELATIONSHIP WITH THE INTERNATIONAL REGISTRATION SYSTEM Article 85bis*l Application of the Madrid Agreement Concerning the International Registration of Marks (1) (a) Where, in connection with an application for international registration under the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as "the Madrid Agreement"), a request for territorial extension is made in respect of one or more Member States, with an indication that that request is for a Community trade mark, the international registration effected upon such an application shall have the effect of a duly registered trade mark, provided that the Office does not refuse protection in accordance with Article 5 of the Madrid Agreement. (b) The Office shall take the decisions referred to in Article 5 of the Madrid Agreement. The time limit referred to in Article 5(2) shall be one year from the date on which the mark or ~he request for territorial extension has been recorded in the International Register under the Madrid Agreement. (2) (a) Any application for international Agreement filed with the Office shall be accompanied by a handling fee payable to the fixed in the fee regulations. registration under the Madrid in.... **) and shall be Office whose amount shall be (b) Any applicant for a Community trade mark may request that registration be effected in time for the application for internatiohal registration under the Madrid Agreement to be filed within the priority oeriod. The Office shall comply with such a request, and it shall apply, mutatis mutandis, Articles 33 to 35 only after such registration. Such a request shall be subject to an additional fee whose amount shall be fixed in the fee regulations. *) The adoption of this Article would probably entail consequential changes in other provisions of this Regulation or of the implementing or fee regulations. **) Whatever language or languages were chosen in the final text of the Community Regulation, it is understood that, for the purposes of this Article, only English and/ or French could be prescribed. [End of Annex II and of document]

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