Transcript 18ter

Management of an IR:
Selected forms and procedures to
encounter during the lifespan of the IR
Debbie Roenning
Director, Legal Division,
Brands and Designs Sector
Israel,
February 8, 2012
Various statements from DCP
Offices of designated Contracting Parties (DCP) may
communicate the status of protection of a mark through
various statements in the course of their examination:
Provisional refusal – Rule 17
Interim status – Rule 18bis
Grant of protection – Rule 18ter(1)
Final decisions – Rule 18ter(2) and (3)
Further decision – Rule 18ter(4)
Invalidation – Rule 19
In 2011 the IB received…
17,973 statements according to Rule 16
56,730 statements concerning the interim status of a mark
– Rule 18bis
162,569 statements of grant of protection – Rule 18ter(1)
73,051 notifications of provisional refusal – Rule 17
62,179 statements concerning final decisions – Rule
18ter(2) and (3)
517 statements concerning further decisions – Rule
18ter(4)
443 notifications of invalidation - Rule 19
Interim status – Rule 18bis(1)(a)
Conditions
Without notification of provisional refusal
Ex officio examination has been completed
No grounds for refusal, but
Protection subject to opposition or observation
Content: Date by which opposition or observation may be
filed, if known
Timeliness: Optional but before the expiry of the applicable
refusal time limit
Interim status – Rule 18bis(1)(b)
Conditions
After notification of provisional refusal
Ex officio examination has been completed
No grounds for refusal, but protection subject to
opposition or observation
Content: Date by which opposition or observation may be
filed, if known
Timeliness: Optional, but after sending a notification of
provisional refusal
Grant of protection – Rule 18ter(1)
Conditions
Without notification of provisional refusal
All procures completed, and there is no ground to
refuse
Form: Could take the form of a list, electronically or on
paper
Timeliness: As soon as possible, but before the expiry of
the applicable refusal time limit
Protection following a provisional
refusal – Rule 18ter(2)
Conditions
After notification of provisional refusal
All procedures completed, and
Provisional refusal is withdrawn (total withdrawal), or
Protection granted for some goods and services (partial
withdrawal or confirmation of partial provisional refusal)
Content: Scope of protection, in a positive manner
Timeliness: After sending a total or partial provisional
refusal
Model form 5 – statement of grant of protection following a
refusal
Confirmation of total provisional refusal
– Rule 18ter(3)
Conditions
After notification of provisional refusal
All procedures completed, and
A total provisional refusal is confirmed
Timeliness: After sending a total provisional refusal
Further decisions – Rule 18ter(4)
Conditions
After declarations under Rules 18ter(2) o 18ter(3)
Further decision affects the scope of protection, and
The Office is aware of that decision
Content: Scope of protection
Timeliness: After sending a declaration concerning a
final decision
Invalidation – Rule 19
The decision
Has observed due process, Articles 5(6) of Protocol
The effects of an IR are invalidated and the IR is not
subject to appeal
Content:
The authority
IRN and name of the holder
Scope of the invalidation
The fact that the decision is not subject to appeal
The date the decision was pronounced and, if known, the
effective date
all procedures
completed
18ter(
1)
grant of
protection
MF4
no opposition
observation
18ter
(2)
18bis
(1)(a)
MF5
interim
status
MF8
no grounds
for refusal
total or partial
protection
grant
opposition
observation?
18ter
(4)
17(1)
& (3)
refusal based
on opposition
further
decision
MF3
invalidation
further
decision
opposition
18ter
(3)
MF6
refusal limit
refuse
19(1)
confirmation of
total provisional
refusal
invalidation
interim status
opposition or
observation?
18bis
(1)(b)
17(1)
&(3)
MF8
MF3
opposition
18ter
(2)
refusal based
on opposition
total or partial
protection
MF5
grant
18ter
(4)
17(1)
(a)
provisional
refusal
19(1)
MF7
further
decision
MF3
grounds
for refusal
18ter
(3)
refusal limit
MF6
refuse
invalidation
further
decision
confirmation of
total provisional
refusal
invalidation
Subsequent designation
“Territorial extension of protection” (Art 3ter and Rule 24)
A Contracting Party (CP) may be designated subsequently
if, at the time of this subsequent designation, it is bound by
the same treaty as:
- the CP whose Office is the Office of origin (no change in
ownership)
- the CP with which the new holder has a connection (in
case of change in ownership)
Exception in Article 14(5)
The 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
The form MM4 (1)
Form MM4 (compulsory)
The subsequent designation may relate to one IR only
May subsequently designate several CPs
May be presented directly to the IB by the holder or via the
Office of the CP of the holder
Recording of necessary changes should be made before
making the subsequent designation
Representative may be appointed in MM4
The form MM4 (2)
Certain requirements for certain CPs
To declare in the form (2nd language EU and intent to use)
Separate forms (seniority claim, declaration of intention to
use the mark)
List of G&S must be within the scope of the IR
No need to repeat miscellanous indications if they are already
given in the international application
Similar fee structure as for international applications
Date of Subsequent designation
MM4 presented directly to the IB – it will bear the date in
which it was received by the IB
MM4 presented through an Office – it will bear the date on
which it was received by the Office, provided that the IB
receives it within 2 months from that date
Where subsequent designation contains a request that it
take effect immediately after some other event (renewal or
the recording of a change or cancellation), the subsequent
designation will bear the date of the recording of that other
event
Irregularities may effect the date of subsequent designation
Recording, publication and notification
Conversion (opting-back provision)
To the extent that a designation of EU in an IR has been
withdrawn, refused or has ceased to have effect,
conversion may be requested through a subsequent
designation of its Member States under the Madrid system
Offers the holder of an IR the option of converting the
designation of the EU into either a national application filed
directly with the Office of a Member State or a subsequent
designation of that Member State under the Madrid system
Form MM16 to be presented through OHIM
Must indicate ground for the conversion
A subsequent designation resulting from conversion will
bear the date on which the EU was recorded in the
International Register
Changes in the name and/or address
Change of name or address of the holder
Form MM9 is compulsory
To be presented to the IB directly by holder or
through Office of the CP of the holder
Change of name or address of the representative
Form MM10 is optional
Restrictions in the protection of the IR
The holder may wish to record restrictions in the
protection of his IR
A limitation (MM6)
A renunciation (MM7)
A cancellation (MM8)
Forms to be presented to the IB directly by the holder or
by the Office of the CP of the holder
Limitation (MM6)
A limitation is a procedure to remove G&S in respect of
all or some of the DCP in an IR
One form may contain a limitation for several IRs
The G&S will not be removed from the IR as recorded in
the International Register
The G&S may be subject to subsequent designation and
will be taken into account when calculating the
supplementary fees for renewal
Voluntary limitation – no transformation later is possible
Declaration that a limitation has no effect
Recording of a Limitation
Renunciation (MM7)
A renunciation is a procedure intended to abandon the
effects of an IR for all the G&S in respect of some of the
DCP
One form may be used to request the recording of a
renunciation of several IRs
The G&S may be subject to subsequent designation
Voluntary renunciation – no transformation later is
possible
Cancellation (MM8)
A cancellation is a procedure to cancel the effects of
an IR for all or some of the G&S in respect of all the DCP
G&S will be permanently removed from the International
Register
No subsequent designation will be possible
Would need to file a new International Application
Voluntary cancellation – no transformation later is
possible
Limitation, Renunciation, Cancellation
Limitation
(MM6)
Renunciation
(MM7)
Cancellation
(MM8)
Goods &
Services
Some
All
Some or All
Designated
Offices
Some or All
Some
All
Effects for
Register
Remain
Remain
Removed
Subsequent
Designations



Renewals



Fees
177 CHF
N/A
N/A
Change in ownership
Change in ownership may result from a contract
(assignment), court decision, operation of law
(inheritance or bankruptcy), or automatic (merger of two
companies)
May relate to all G&S or to only some G&S
May be in respect of all the DCP or only some of them
Form MM5 is compulsory and regard total and partial
change in ownership
Entitlement of the transferee
Change in ownership may be recorded only if the
transferee is a person who is entitled to file an
International Application
Entitlement of the new owner is considered in respect of
each DCP
Several transferees – each of them must qualify as
entitled
A transferee may claim the necessary connection with
several CPs (accumulation of entitlement)
Form MM5
The form may be presented to the IB by the holder, by
the Office of the CP of the recorded holder, or by the
Office of the CP of the transferee
An Office may require the furnishing of evidence
concerning the change in ownership
A single request may relate to several IRs
Total change in ownership: The recording of the
representative of the transferor will be cancelled ex
officio by the IB
Partial change in ownership: The CPs in respect of
which the change in ownership is to be recorded should
be named and the G&S should be listed
Recording of new holder?
Spain
CP of the transferor
Egypt
CP of the transferee
Israel
France
Germany
Algeria
China
Partial change in ownership
Request of change in ownership of an IR in respect of
only some G&S or some of the DCPs, the change will be
recorded under the IRN concerned
A separate IR is created – with indication of a capital
letter
The resulting separate IRs may be the subject of a
subsequent total or partial change in ownership
Possible merger of IRs resulting from partial change in
ownership
Declaration that a change in ownership has no effect
Ceasing of Effect and Transformation
For a period of five years from the date of its registration,
the international registration remains dependent on the
basic mark
If the basic mark ceases to have effect, the IR will no
longer be protected
Transformation limits the effects of dependency
Cannot follow voluntary cancellation of designation
Not possible for designations already subject to total
refusal
Must file in national/regional Office within 3 months from
the date on which the IR was cancelled
Procedure of Ceasing of Effect
Cancellation
3
2
Designated
Inscription to
Register
IB
Office
1
Ceasing
of effect
5
Transformation
b, c
3 months from
the date of
cancellation
Office of origin
Basic mark
a, b, c
Cancellation
before the expiry of 5
yrs from the date of
IR
Local Rep.
Holder
4
Power of
attorney
3
Renewal of an IR (1)
The IR is valid for a period of 10 years, and can be renewed
by paying the renewal fees
When renewing an IR, no modifications may be made
Any modifications to be made, shall be duly presented on
the required form, before or after the renewal
Possible to renew for some DCP only
Unofficial notice of renewal 6 months before the date of
expiry
Payment direct with the IB
Fees are due at the date of expiry at the latest
6 months grace period (+ 50% basic fee)
Payment by credit card or current account with WIPO
E-renewal http://www.wipo.int/e-marks
Renewal of an IR (2)
4
3
Renewal
Notification
Register
IB
Designated Office
1. Renewal Reception
2. Data Entry
3. Renewal Examination
4. Finance processing
1
Renewal
Request
Reminder
＋Payment
Six months
before the expiry
REP
5. Renewal Inscription
6.1 Gazette
6.2 Notification to the DCPs
6.3 Certificate to the holder
Inscription to
Reminder
1
Holder
2
Thank you
for your attention
[email protected]