The art of writing is the art of discovering what you believe.
Gustave Flaubert

Thursday 23 January 2014

Opting back

Trade mark protection may be secured in the European Union by designating it in an International application under the Madrid Protocol. The extension to the EU may fail, just as an ordinary application for a Community trade mark may fail, for many reasons - but a CTM is particularly vulnerable because of the possibility that there are prior national rights, such as an earlier trade mark, in one of the 28 Member States.

The procedure for an ordinary CTM application allows the applicant to convert (at no small expense) the application into a collection of national applications, omitting those Member States where there is a fatal problem. A trade mark owner who has designated the EU through the Protocol may choose to convert the designation of the European Union into either a national application filed directly with the Member States concerned (as would be the case with a directly-filed CTM) or a subsequent designation of those Member States under the Madrid system.  This is known as 'Opting Back'. Subsequent designations must be submitted on form MM16, and will bear the date on which the designation of the EU was recorded in the International Register (Rule 24 of the Common Regulations, as amended).  This enables the applicant to retain the cost advantages of the Madrid System, and reduces the effect of dependency and central attack for EU designations.

See WIPO Information Notice No. 2/2004, January 12, 2004. 

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