Extending a Community Trade Mark outside the EU31 January 2012
by Ina Dimireva -- last modified 31 January 2012
A Community Trade Mark (CTM) application or a registered CTM can be used as the basis to extend protection internationally via an International Registration (IR). This is governed by the Madrid Protocol system, which offers CTM owners/applicants the possibility to have their trade marks protected in several countries besides the EU member states by simply filing one application directly with their own national or regional trade mark office.
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) in Geneva. It has been in operation since April 1996 and has been ratified by many countries around the world, including most European countries individually, as well as the US, Japan, Australia, China, Russia, and, in October 2004, by the European Community.
If the basic mark chosen is a CTM application or registration, the international application must be filed directly at OHIM. In order to use OHIM as the ‘Office of Origin’, the CTM owner/applicant must be a national of a country of the European Union. Alternatively, the CTM owner/applicant must have a real and effective industrial or commercial establishment or domicile within the European Union, i.e. not all CTM owners/applicants can file IR applications based on a CTM.
To file an IR application, it is compulsory to use one of the two following forms (the use of the OHIM- adapted versions of WIPO forms is recommended):
- OHIM Form EM 2 in one of the 22 official languages of the EU, available in two different versions. The first version of this OHIM form is for applications made in one of the three languages of the Protocol (French, Spanish or English). The second one is for applications made in the other languages of the EU.
- WIPO MM2 Form in English, French or Spanish.
The international application can be filed in any of the official languages of the European Union, but a Madrid Protocol language must be indicated (French, English or Spanish). A transmittal fee of €300 must be paid to OHIM when requesting the international application. The fees relating to international applications must be paid directly to WIPO. Any payments to WIPO sent to OHIM will be returned to applicants.
OHIM verifies the content and completeness of the international application and then forwards the international application to the International Bureau. OHIM is required to notify WIPO of any relevant changes that affect the CTM during the dependency period (five years following the date of the international application).
It is possible to add more countries to your international registration (once it has been registered by WIPO) and to file them through OHIM as Office of Origin, but it is simpler to file subsequent designations directly with the International Bureau of WIPO.
Office for Harmonization in the Internal Market (Trade Marks and Designs)