SONN Patentanwälte – IP Attorneys

CTM system and 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).

As of October 1, 2004, it will be possible that a CTM application is the basis for an international mark or that the EC is designated under the Madrid Protocol, respectively. This will be a link between the Madrid Protocol System and the Community Trade Mark System and will therefore be an alternative way to obtain a CTM or to obtain a national mark based on a CTM.

Applicants using Madrid Protocol system could designate the European Community in their International trade mark application. WIPO will notify the EC designations to the OHIM and they will be examined in the same way as direct CTM applications. The OHIM will have 18 months to notify of any provisional refusal relating to the EC designations.

The CTM applications or registrations could be used as a basic trade mark for an international application. The International Application should be filed directly at the OHIM. Where a CTM is used as the basis of the international application, the OHIM will have to check, as an office of origin, that both marks are the same and will then transmit the international application to WIPO. The International Bureau of WIPO will register and publish the international mark in the International Gazette and will then notify the offices of the designated countries.