National Seminar on the Madrid Protocol for the International Registration of Marks Jerusalem

July 13 - 142010

André Ntamack

Head, Examination and Registration Section

Preparing the International Application

Filing conditions and presentation of an International Application

Representation before the International Bureau

Role of the Office of origin

Types of International Applications

You need (natural person or legal entity):

an attachment to a Contracting Party = Office of origin - establishment

- domicile

- nationality

a basic application or a basic registration in that Contracting Party (in the same name, for the same mark, and for the same goods and services or less)

Filing conditions: entitlement to file and basic mark

Establishment

Taken from Article 3 of Paris Convention

Excludes fraudulent or fictitious entitiesSome industrial or commercial activity must take place (i.e., not a mere warehouse), but need not be the principle place of business.

Question of national law:What constitutes an establishment in each Contracting Party may differ (e.g., actual headquarters, law under which establishment was constituted, parent/subsidiary relationship, etc.).

Domicile

Can have different meanings; can be defined broadly or narrowly

Question of national law

Natural person (e.g., official authorization; more or less permanent situation of fact, such as actual residence; etc.)

Legal entity (e.g., actual headquarters; law under which it was constituted; etc.)

Nationality

Question of national law:

Natural person

Legal entity (e.g., law under which it was constituted; whether or not it is a State enterprise; etc.)

Representation before theInternational Bureau

WHO may be appointed

No limit on address of representative

Need not be in a Contracting Party

HOW to make the appointment

– in an official form

• international application• subsequent designation• request for recording of a change

– in a separate communication (letter) or in the unofficial form (MM12)

– no power of attorney is needed!

Signed by the Signed by the person person making the making the appointmentappointment

1. Ex officio by the International Bureau

new appointment

change in ownership

2. By a communication sent to the International Bureau

the applicant/holderby

the representative

Cancellation of the Appointment

The Filing and Registration Procedure

International Application

Office of Origin

International Bureau

Offices of the Designated

Contracting Parties

Basic registrationBasic application

Office of Origin

Certifies certain facts concerning the relationship between the international application and the basic application or registration (e.g., same applicant, same mark)as well as the date of the IA

Role of the Office of Origin

International application

International Bureau

Formality examination

Inscription in the International Register

Publication in the Gazette

Issuance of a Certificate for the holder and Notification to the designated Contracting Parties

International BureauTasks

Office of the DesignatedContracting Party

Substantive examination opposition

12/18+ months

Provisionalrefusal

No provisional refusal/withdrawn = national registration

Designated Contracting PartyTasks

Types of International Applications

Two Treaties (Madrid Agreement and Protocol)

Two possible designations

Three types of International Applications

One System

Types of Applications

Governed by Agreement and Protocol

some designations governed by Agreement

some designations governed by Protocol

Governed exclusively by Protocol

all designations governed by Protocol

Rule 1(viii):

Rule 1(ix):

Rule 1(x):

Governed exclusively by Agreement

all designations governed by Agreement

MM3

MM2

MM1

P

PP

P

or

AP

USA

P

Why is this type of international application governed exclusively by the Protocol?

MM2

China

Israel

P

P

P

or

P

P

Why is this type of international application governed exclusively by the Protocol?

MM2

APChina

UK

Israel

MM2 - Requirements

Free choice of the Office of originBasic Registration or Basic ApplicationMM2French, English or Spanish

Each DesignationSupplemental + Complementary, or Individual

12 months, or 18 months, or 18+ months

Fees:

Refusal Period:

International Application

Office of OriginFiling basis:

Form:Language:

P

Questions

ExampleAll 3 DCPs have optedfor individual fees.

Israel

Treaty Governing IA:Application Form:

Language of Application: IA can be based on a basic app:

A P A/PMM1 MM2 MM3French English SpanishYes No

Which DCPs will receive individual fees?: UK CH BX

P

AP

AP P

P

P P

Benelux

UK

Switzerland

International Application and Examination

– Content of the International Application– Examination by the Office of Origin– Examination by the International Bureau– Irregularities

Content of the InternationalApplication (MM2)

Four mandatory elements:– identity of applicant

– designated Contracting Parties– reproduction of the mark– indications of goods and services

Cost of an Application

Basic Fee Black and white Mark 653 CHFMark in color 903 CHF

Designation fee 100 CHF/countryOR individual fee xxx CHF/per CP

Fees for goods & services beyond three 100 CH/classor individual fee

Examination by the Office of origin

Certification by Office of Origin

Item 13 Application Form

Identity between, inter alia

applicant

mark

goods and services

Date of receipt of international application

Irregularities to be remedied byOffice of origin

Rule 11(4)

Official form not used

Rule 15 Omissions (4)

Applicant’s entitlement

Certification Irregularities

No basic application/registration

Procedure

Office of Origin informed/notified

Applicant informed/notified

3-month time limit for correction

Examination by the International Bureau

– Reproduction – Entitlement of the applicant Entitlement of the applicant – Designated Contracting PartiesDesignated Contracting Parties– Classification of goods/servicesClassification of goods/services– Fees paidFees paid

ExaminationExamination

No IrregularitiesNo Irregularities

CorrectionCorrection w/in time limitsw/in time limits

IrregularitiesIrregularities

No correctionNo correctionw/in time limitsw/in time limits

ScanningScanning

Reception Reception of the of the requestrequest

REGISTERED

REGISTERED or

ABANDONED

Finance processingFinance processing

TranslationTranslation

Registration Process within the IBRegistration Process within the IB

IRREGULARITIES

Rule 12Classification

Rule 13Indication

Rule 11Other irregularities

of goods and services

Rule 12 : Classification of goods and services

The IB considers that the G&S should be classified in a different class or have not been classified

Correction by the OO

The IB has the “last word”

IB Proposal

No reply from OO

IB modifies proposal

IB withdraws proposal

IB confirms proposal

REGISTERED(as per IB proposal)

Rule 12 : Procedure

3 monthsto resolve

ABANDONED 1Fees not paid

Fees paid

reminder : 2 months

1 Refund: fees paid minus 1/2 basic fee for a b&w registration.

OO gives

opinion

REGISTERED(as filed)

REGISTERED (as per modification

or IB proposal)

Fees

paid

Fees

paid

Rule 13 : Indication of G&S

The IB considers that a term indicated is:

- too vague for the purposes of classification;- linguistically incorrect;

- incomprehensible.

Correction by the OO

The IB is the only « judge »

IB Suggestion

3 monthsto resolve

IB rejects

No reply from OO

REGISTERED

(as filed but with notation)

IB accepts

OO proposal

Rule 13 : Procedure

REGISTERED (as per proposal)

REGISTERED (as filed but with

notation)

IB Proposal

No Reply

OO Reply

3 monthsto resolve

Rule 11: other irregularities

REGISTERED

ABANDONED*

Corrected

Not corrected

* Refund: fees paid minus 1/2 basic fee for b&w registration.

International Registration

Date of the International Registration

Refusals

Responding to Refusals

Invalidation

Ceasing of Effects (5-year dependency period)

Date of the International Registration

Article 3(4) of the Protocol

Reception of application by OO, if received by IB within 2 months

Rule 15 (four mandatory elements)

identity of applicant

designated Contracting Parties

reproduction of the mark

indications of goods and services

Date of the International Registration()

Reception of the request by the OO

Reception of the request by the IB

*

Reception of the request by the OO

Reception of the request by the IB

*

Reception by the IB of the last missing mandatory element

Reception of the request by the OO

* 2 months

2 months

2 months

International Registration

Refusals

Are there any limitations on the right to refuse?

• Time Limits• Grounds

Time Limits

Notification of provisional refusal :12 months

Mandatory under Agreement

Optional under Protocol

18 months Optional under Article 5(2)(b) of the Protocol

‘18 months +’ in case of opposition Article 5(2)(c) of the Protocol

Non-valid grounds for refusal

formal grounds

classification of the goods/services (Rule 12 !)

multi-class registration (Art. 5(1))

limited goods or services (Art. 5(1))

Two different types of grounds for refusals

1) Absolute grounds

2) Relative grounds

Two different types of grounds for refusals

1) Absolute grounds- Descriptive - Devoid of distinctive character- Generic- Contrary to accepted principles of morality or

to public policy- Deceptive

Two different types of grounds for refusals

1) Absolute grounds- Prohibitions concerning State Emblems, Official

Hallmarks, Emblems of Intergovernmental Organizations

- Shape of the goods- Origin of alcoholic beverages, agricultural

products and foodstuffs

Two different types of grounds for refusals

2) Relative grounds

i) oppositions = earlier rights : the mark is of such nature as to infringe rights acquired by third parties / the mark constitutes a reproduction, an imitation or a translation, liable to create confusion of a prior mark for similar or identical products and/or services

ii) list of goods and/or services too vague / broad

Notification of refusal

SGP

When all the procedures before the office are over

The mark is protectedRule 18ter(1)

Mandatory - Rule 40(5)

(01/01/2011)

Statement of Grant of Protection

Notification of a provisional refusal based on opposition

Rule 17(1)

No grounds for refusal by the office

BUT

oppositions/observations still possible

Rule 18bis(1)(a)

EX OFFICIO EXAMINATION COMPLETED

SGP

When opposition period has expired without any oppositions/observations

Rule 18ter(1)

INTERIM STATUS OF THE MARK (OPTIONAL)

SGPFor ALL the goods and

services

Rule 18ter(2)(i)

Notification of provisional refusalRule 17(1)

Further decision affecting the protection of the mark

Rule 18ter(4)

Confirmation of total provisional refusal

Rule 18ter(3)

WHEN ALL PROCEDURES BEFORE OFFICE COMPLETED

SGPfor SOME goods and

services

Rule 18ter(2)(ii)

FINAL DISPOSITION ON THE STATUS OF THE MARK (MANDATORY)

Responding to refusals

Governed entirely by national law (Procedures governed by national regimes: hearings, appeals,…)

Appoint local representatives (may not be mandatory, but advisable)

Obtain informed and authoritative advice

Decide early on strategy

Article 5(6) & Rule 19

Invalidation

What is meant by “invalidation” ?

Any decision by a Competent Authority (adm. or jud.) of a DCP revoking or cancelling the effects of an IR with regard to all or some G & S covered by the

designation.

Notification of Invalidation of National Effect

When?

When Appeal no longer possible

Notification by Office of Contracting Party where invalidation was pronounced

Contents of Notification

Authority pronouncing invalidation

Exhaustion of remedies

IR number

Name of the holder

Goods and services concerned

Date of pronouncement and of effect

International Registration

Dependence

Ceasing of Effects of Basic Mark

Transformation

Dependence

The protection resulting from the IR registration remains dependent on the basic registration or application

TIME: 5 years from the date of the IR

At the end of the 5-year dependency period, the IR becomes independent of the basic mark

Ceasing of Effects

Article 6(3) and (4) of Protocol

Rule 22

Definition

“Ceasing of Effects” of Basic Mark can be due to:

Withdrawal, lapse or renunciation or final decisionof rejection, revocation, cancellation or invalidation

An act or failure to act by owner of basic mark oran act by Office of origin or a third party

Must occur:

Before expiry of 5-year dependency period, or

After expiry of 5-year dependency period if related to a proceeding initiated before expiry of 5-year period.

Commonly called “Central Attack”

Resulting Cancellation of goods and services in the IRaffects all designated Contracting Parties

Procedure

Basic Mark

International Registration

(IR)

Effect of IR as a national/regional

registration

5-Year Dependency

Always Dependent

If a basic mark “ceases to have effect” in wholeor in part within 5 years of date of IR, Officeof Origin notifies IB, pursuant to Rule 22, and requests partial or total cancellation of IR.

International Bureau cancels IR to the extent requested by Office of Origin. IB notifies all designated Contracting Parties of partial or total cancellation of IR. Records and publishes.

No particular action required; some designated Contracting Parties may update their databases.

In order to soften the consequences of the “Central Attack”, the Protocol provides for the holder of an IR cancelled to TRANSFORM the mark with the Offices of all designated countries.

Transformation

TIME: The application has to be filed within 3 months from the date on which the IR was cancelled in the International Register

FORMAL REQUIREMENTSSame markThe goods and services of the application are covered by the goods and services contained in the IR in respect of the Contracting Party concernedSuch application complies with all the requirements of the applicable law, including the requirements concerning fees

Transformation

The transformation is not available:

1. Where the IR has been cancelled at the request of the holder

2. With respect to a Contracting Party in the territory of which the IR has been subject of a total refusal, invalidation or renunciation

3. In a Contracting Party whose designation is not governed by the Protocol or in a Contracting State where the IR did not have effect

Managing an International Registration

• Subsequent designations• Modifications

– changes in name and address of holder/representative– assignments (change in ownership for all or some G&S and

for all or some DCPs)– Recording of limitation of G&S for all or some DCPs– Recording of renunciation of all G&S for some DCPs– Recording of cancellation of all or some G&S for all DCPs– Recording of licenses– Recording of restriction of the holder’s right of disposal

• Term of protection and Renewal of an International Registration

Managing the InternationalRegistration

Subsequent DesignationsArt. 3ter(2)

(Rule 24)

Presentation

Form MM4

By the Holder or by Office of the Contracting Party of

the Holder

Subsequent Designation: Principle

A Contracting Party may be designated subsequently if, at the time of this subsequent designation, it is bound by the same treaty as:

the Contracting Party whose Office is the Office of origin (no change in ownership);

the Contracting Party with which the new holder has a connection (in case of change in ownership).

Date of Subsequent Designation

Presentation by Holder: date of receipt by IB

Presentation by Office: date of receipt by Office if received by IB within 2 months

Rule 24(6)(d)

effect after renewal

effect after recording of change

Term of a Subsequent Designation

The period of protection of a subsequent designation does not have an independent lifetime of 10 years, but expires on the same date as the international registration to which it relates

___________________________________________________

1/01/1996 1/01/2016

PAYMENT VALID ONLY UNTIL 1/01/2006

SUBSEQUENT DESIGNATION MADE BEFORE 10 YEARS

1/01/2006

___________________________________________________

1/01/1996 1/01/2016

PAYMENT VALID UNTIL 1/01/2016 FOR THIS DESIGNATION

AS FROM 1/01/2016 : MARK RENEWABLE EVERY 10 YEARS

SUBSEQUENT DESIGNATION MADE AFTER 10 YEARS

1/01/2006

Managing the InternationalRegistration

Change in Ownership

Recordal of Change in Ownership

Article 9 Protocol

Article 9bis and 9ter Agreement

Rule 25

Form MM5

Change in Ownership

May result from, e.g.:

- Contract/Assignment

- Court decision

- Operations of law (Inheritance, bankruptcy)

May relate to some or all goods/services

May relate to some or all Contracting Parties (CPs)

Entitlement to be the New Holder

If new owner is entitled to file international applications

Entitlement of the new owner is considered in respect of each designated Contracting Party

Accumulation of entitlements possible (Rule 25(2)(a)(iv)

Presentation of Request Rule 25(1)(b)

• by the recorded holder:by the recorded holder:

(the transferor)(the transferor)

• directlydirectly to the IB to the IB

• through an Officethrough an OfficeOffice of holder’s CPOffice of holder’s CP

Office of new owner’s CPOffice of new owner’s CP

• by the new owner:by the new owner:

(the transferee)(the transferee)

• through an Officethrough an Office

Office of holder’s CPOffice of holder’s CP

Office of new owner’s CPOffice of new owner’s CP

Managing the International Registration

Limitation, Cancellation, Renunciation Rules 25, 26 and 27

some designatedContracting Parties

Limitation some of the goods and servicesall designatedContracting Parties

some of the goods and servicesCancellation all designated

all the goods and services Contracting Parties

Renunciation all the goods and services some designatedContracting Parties

Limitation, Cancellation, Renunciation

EFFECTS CONSEQUENCES

no protection for subsequent designation is the goods/services possible

LIMITATION goods/services remain goods/services taken into kept in the International account for calculating Register renewal fees

no protection for the no subsequent designation goods/services in respect of those goods/services

PARTIAL CANCELLATION goods/services are goods/services are not taken

removed from the into account for calculatingInternational Register renewal fees

RENUNCIATION no protection in the subsequent designation Contracting Party of the Contracting Party

is possible

Term of ProtectionRenewal

Articles 6(1) and 7(1) Rule 30(4)

Term of Protection and Renewal

term of registration: 10 years

renewal for further 10 years

Renewal Procedure

Unofficial notice of expiry

6 months before expiry of 10 year periodPayment

direct with the IB

fees plus indication of purpose, or

fees plus MM 11Fees are due

at the date of expiry at the latest

6 months grace period (+ 50% basic fee)

E-Renewal

As from April 3, 2006 the “E-Renewal” system is available for electronic renewal of international registrations of marks

Payment by:

Credit Card

Current Account opened with WIPO

http://www.wipo.int/e-marks

No Changes at Renewal !

IR is renewed as recorded

No changes as part of the renewal:

name or address

goods or services

subsequent designationsException

renewal for some designated CP only

Thank you!

andre.ntamack@wipo.int