The Trade Marks (International Registrations Designating the
European Community, etc.) Regulations 2004 will largely come into
effect on 1st October and mean that the UK will have to apply trade
mark protections to an additional form of international trade
mark.
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
60 signatories, including the US.
Until now, therefore, the UK has been obliged to offer trade
mark protection to trade marks registered either within the UK,
with the Community Trade Mark office, or with the Madrid Protocol's
administrator, the World Intellectual Property Organisation (WIPO)
in Geneva.
The EU finally joined the Madrid Protocol in June, and the
accession established 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.
The accession and the implementing UK legislation mean that as
from 1st October 2004 the UK will offer protection to an additional
category of trade mark, namely those marks registered under the
Madrid Protocol by Community Trade Mark holders – who may be from a
country that is not itself a signatory to the Protocol – or those
marks registered as a Community Trade Mark by holders of
international registrations under the Madrid Protocol.
