The international exploitation of trade marks has been subject to regulation since 1892, when the 'Madrid Agreement Concerning the International Registration of Marks' was signed.
Under the Agreement, registration in one country that is a signatory to the Agreement gives the trade mark holder the right to file a single application which will then cover registration in any other signatory country the person chooses.
Obtaining trade mark registration in non-signatory countries is possible but involves a separate application and fee to each country's administrative trade mark office.
The UK and some other countries were unhappy with the Agreement and joined the system in 1989 subject to qualifications contained in what is now known as the Madrid Protocol. To date there are over sixty signatories, including the US.
The EU has been negotiating to join for at least seven years, but technical provisions have made the process difficult. These were resolved last year, allowing the Council of Ministers to formally approve membership of the system in November. A Regulation making the necessary changes to the existing Community Trade Mark rules was also approved.
Yesterday the EU submitted its formal accession instrument to the Madrid Protocol to the system's administrator, the World Intellectual Property Organisation (WIPO) in Geneva. It is the first time that the EU has acceded to a WIPO Treaty.
The accession will establish a link between the Madrid Protocol system and the EU Community Trade Mark system, which is administered by the Office of Harmonisation in the Internal Market (OHIM) in Alicante, Spain.
As soon as the accession enters into force on 1st October 2004, Community Trade Mark applicants and holders will be allowed to apply for international protection of their trade marks through the filing of an international application under the Madrid Protocol. Conversely, holders of international registrations under the Madrid Protocol will be entitled to apply for protection of their trade marks under the Community Trade Mark system.
According to the Commission, holders of Community Trade Marks will now be able to obtain protection for their trade marks in Madrid Protocol signatory countries through the OHIM.
Once OHIM has established that an application to that effect has indeed been filed for registration as a Community Trade Mark, it will transmit to WIPO the applicant's requests to extend protection to the countries designated in the application.
WIPO will then publish the international trade mark in its International Gazette and notify the international registration to the relevant national authorities.
Welcoming the accession, Internal Market Commissioner Frits Bolkestein said:
"European businesses will now be able to obtain and protect their trade marks internationally in a simple, affordable and effective way, as they have wanted for some time. At the same time this should further stimulate trade and innovation, create new commercial opportunities and boost integration within the EU Internal Market."