The European Union’s accession to the Madrid Protocol took effect on October 1, 2004.
Consequently, starting on that date, it became possible to apply for and obtain international registrations based on an EUTM application or registration and also to file international registrations designating the European Union as a unit.
Title XIII EUTMR consists of three sections respectively laying down certain general provisions (Art. 182), provisions for international registrations based on an EUTM application or registration (Arts. 183 to 188), and provisions for international registrations that designate the European Union (Arts. 189 to 202).
(A) The following are the main points regulating international registrations based on EU trademarks (referred to as “international applications” in Article 182 EUTMR): (1) only nationals of the Member States of the European Union or parties having their legal domicile or an establishment in one of the Member States, may file application for an international trademark registration based on an EUTM application or registration; (2) the application is to be filed at the EUIPO, which shall be responsible for forwarding the application to WIPO; (3) a fee is to be paid to the EUIPO, while the International Bureau’s fees are payable directly to WIPO (Art. 188 EUTMR); (4) if the international application is based on an EUTM application, prosecution may be deferred until registration of the EUTM, in which case the international application will be deemed to have been received on the date of registration of the EUTM (Art. 183.2 EUTMR); (5) the international application may be filed in any of the official languages of the European Union (Art. 184.1 EUTMR), but if the language used is not one of the languages allowed under the Protocol (i.e., it is a language other than English, French, or Spanish), the application shall designate one of these last three languages as a second language to be used by the EUIPO when forwarding the international application to WIPO (Art. 184.2 EUTMR);
(B) The main considerations relating to the regulation of international registrations that designate the European Union are: (1) the international registrations are to be published in the EU Trade Marks Bulletin; (2) the international registrations will undergo examination as to absolute grounds for refusal (Art. 194 EUTMR), an EU search report as per Art. 43 EUTMR will be drawn up for them (Art. 195 EUTMR), and these registrations will be subject to opposition proceedings just like EU trademark applications filed directly with the EUIPO; (3) where the examination as to absolute grounds for refusal results in a provisional refusal within the meaning of the Protocol, notification is to be sent to the International Bureau within eighteen months of the date on which WIPO sent the EUIPO notice of the international registration or of the territorial extension (Art. 5.2 (a) and (b) in the Protocol); (4) designation of the European Union for an international registration will require payment of an individual fee (within the meaning of Art. 8.7(a) of the Protocol; (5) there will be a three-month term for lodging oppositions against international registrations that designate the European Union, beginning one month after publication of the international registration in the EU Trade Marks Bulletin; (6) where no objections are raised against the international registration or the objections are overcome, the EUIPO will publish notice of the grant of protection; (7) where the international registration is refused protection, the owner may choose between conversion into one or more national applications in accordance with Arts. 139, 140 and 141 EUTMR or one or more country designations for the international registration (Art. 202 EUTMR).