Transcript No Slide Title

THE MADRID SYSTEM FOR THE
INTERNATIONAL REGISTRATION
OF MARKS
André Ntamack
Tel Aviv, July 4-5, 2007
Preparing the International
Application
Entitlement to file an International Application
Types of International Applications
Choosing the Office of origin
Representation before the International Bureau
Entitlement to File an
International Application
Someone . . .
• Natural Person
• Legal Entity
. . . who has a connection . . .
• Real and Effective Industrial or Commercial
Establishment (“Establishment”)
• Domicile
• Nationality
. . . with a member of the Madrid Union
• Contracting State
• Contracting Organization
– Must have an establishment in, or be domiciled in, the
territory of an intergovernmental organization that is party to
the Madrid Protocol, or be a national of a Member State of
that organization
– Member State of organization does not have to be party to the
Madrid Agreement or Madrid Protocol.
Establishment
• Taken from Article 3 of Paris Convention
• Excludes fraudulent or fictitious entities
– Some 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
• Intended to have same meaning as Article 2 of
Paris Convention
– 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.
Types of
International Applications
One System
2 Treaties
2 Possible Designations
3 Types of International Applications
Types of Applications
Rule 1(viii):
MM1
Rule 1(ix):
MM2
Rule 1(x):
MM3
Governed exclusively by Agreement
all designations governed by Agreement
Governed exclusively by Protocol
all designations governed by Protocol
Governed by Agreement and Protocol
some designations governed by Agreement
some designations governed by Protocol
MM1
Why is this type of international application
governed exclusively by the Agreement?
A
A
Egypt
A
A
San Marino
or
A
AP
France
MM1
Why is this type of international application
governed exclusively by the Agreement?
Madrid Protocol, Article 9sexies
“. . . the provisions of this Protocol shall have no effect . . .”
(“Safeguard Clause”)
A
AP
France
A
A
San Marino
or
A
AP
Vietnam
MM1 - Requirements
International Application
Office of origin:
Filing basis:
Form:
Language:
Cascade applies - Article 1(3) of the Agreement
Basic Registration
MM1
French
Each Designation
Fees: Supplemental + Complementary
Refusal Period: 12 months
MM2
Why is this type of international application
governed exclusively by the Protocol?
P
P
Israel
P
P
or
P
USA
AP
China
MM2
Why is this type of international application
governed exclusively by the Protocol?
P
AP
China
P
P
Israel
or
P
P
UK
MM2 - Requirements
International Application
Office of Origin
Filing basis:
Form:
Language:
Cascade does not apply
Basic Registration or Basic Application
MM2
French, English or Spanish
Each Designation
Fees: Supplemental + Complementary, or Individual
Refusal Period: 12 months, or 18 months, or 18+ months
MM3
Why is this type of international application governed
by the Agreement and Protocol?
Madrid Protocol, Article 9sexies
“. . . the provisions of this Protocol shall have no effect . . .”
(“Safeguard Clause”)
AP
AP
A
P
A
Egypt
P
Israel
France
A
AP
Switzerland
MM3 - Requirements
International Application
Office of Origin
Filing basis:
Form:
Language:
Cascade applies - Article 1(3) of the Agreement
Basic Registration
MM3
French, English or Spanish
Each Designation under the Agreement
Fees: Supplemental + Complementary
Refusal Period: 12 months
Fees:
Refusal Period:
Each Designation under the Protocol
Supplemental + Complementary, or Individual
12 months, or 18 months, or 18+ months
Examples
A
A
Egypt
AP
A
A
AP
Hungary
Belarus
A
Example 1
AP
Slovakia
Questions
Treaty Governing IA:
Application Form:
Language of Application:
IA can be based on a basic app:
A P AP
MM1 MM2 MM3
French English Spanish
Yes No
A
AP
AP
A
AP
France
AP
Germany
Italy
P
Example 2
P
Japan
Questions
Treaty Governing IA:
Application Form:
Language of Application:
IA can be based on a basic app:
A P AP
MM1 MM2 MM3
French English Spanish
Yes No
P
Benelux
AP
AP
A
P
Israel
AP
China
P
Example 3
Questions
P
UK
All 3 DCPs have opted for the 18+ months
refusal period and individual fees.
Treaty Governing IA:
Application Form:
Language of Application:
IA can be based on a basic app:
A P AP
MM1 MM2 MM3
French English Spanish
Yes No
Individual fee and 18+ months
refusal do not apply in which DCP?:
SE CN UK
P
P
UK
P
P
P
AP
Israel
Switzerland
P
Example 4
Questions
AP
Benelux
All 3 DCPs have opted
for individual fees.
Treaty Governing IA:
A P A/P
Application Form:
MM1 MM2 MM3
Language of Application:
French English Spanish
IA can be based on a basic app:
Yes No
Which DCPs will receive individual fees?:
UK CH BX
Choosing the Office of Origin:
When Does the “Cascade” Apply?
Article 1(3) of the
Madrid Agreement
The Hierarchy
Article 1(3) of the Madrid Agreement
(3) Shall be considered the country of origin
the country of the Special Union where the
applicant has a real and effective industrial or
commercial establishment; if he has no such
establishment in a country of the Special Union,
the country of the Special Union where he has
his domicile; if he has no domicile within the
Special Union but is a national of a country of
the Special Union, the country of which he is a
national.
Representation Before the
International Bureau (Rule 3)
WHO may be appointed
• Rule 3(1) to change from April, 2007
• 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
person
making the
appointment
Cancellation of the Appointment
1. Ex officio by the International Bureau
– new appointment
– change in ownership
2. By a communication sent to the International
Bureau
the applicant/holder
by
the representative
International Application and
Examination
Content of the International Application
Examination by the Office of Origin
Examination by the International Bureau
Irregularities
Content of the International
Application – Rule 9 (MM2)
four mandatory elements:
– identity of applicant
– designated Contracting Parties
– reproduction of the mark
– indications of goods and services
overview of the international procedure
basic registration (A+P)
Prerequisite
OR
basic application (P)
OFFICE OF
ORIGIN
INTERNATIONAL
BUREAU
OFFICE OF A
DESIGNATED
CONTRACTING
PARTY
checks the correspondence
between the basic mark and
the international mark
examination on formalities
recording in the international register:
international registration
notification of registration to the
designated contracting parties
substantive examination
refusal of protection
no refusal => protection granted
Examination by the ILPO as
Office of Origin
Rule 9(5)(d)
Rule 11(4)
Certification by Office of
Origin
Rule 9(5)(d) / Item 13 Application Form
• Identity between, inter alia
• applicant
• mark
• goods and services
• Date of receipt of international application
Irregularities to Be Remedied by
Office 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
Registration Process within the IB
No Irregularities
REGISTERED
Finance processing
Scanning
Reception
of the
request
Examination
Translation
Irregularities
– Reproduction
– Entitlement of the applicant
– Designated Contracting Parties
– Classification of goods/services
– Fees paid
Correction
w/in time limits
No correction
w/in time limits
REGISTERED
or
ABANDONED
IRREGULARITIES
Rule 12
Classification
Rule 13
Indication
Rule 11
Other 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”
Rule 12 : Procedure
IB withdraws
proposal
OO gives
opinion
IB Proposal
reminder :
2 months
3 months
to resolve
IB modifies
proposal
Fees
paid
(as filed)
Fees
paid
IB confirms
proposal
No reply from OO
REGISTERED
(as per modification
or IB proposal)
REGISTERED
Fees paid
Fees not paid
1
REGISTERED
Refund: fees paid minus 1/2 basic fee for a b&w registration.
(as per IB proposal)
ABANDONED
1
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 »
Rule 13 : Procedure
IB accepts
REGISTERED
(as per proposal)
OO proposal
IB
Suggestion
IB rejects
REGISTERED
(term deleted if not
classified )
3 months
to resolve
If term classified
No reply from OO
REGISTERED
(as filed but with notation)
Rule 11: Other Irregularities
Corrected
REGISTERED
OO Reply
IB Proposal
3 months
to resolve
Uncorrected
No Reply
*
Refund: fees paid minus 1/2 basic fee for b&w registration.
ABANDONED*
International Registration
Date of the International Registration
Effects of the International Registration
Refusals and Responding to Refusals
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(*)
2 months
*
Reception of the
request by the
OO
Reception of the request by
the IB
2 months
*
Reception of the
request by the
OO
Reception of the request by
the IB
2 months
Reception of the
request by the
OO
*
Reception by the IB of the last
missing mandatory element
Effects of the International
Registration (Article 4)
The International ‘Registration’ =
A National Application
until the expiry of the time limit to issue a refusal
A National Registration
once the time limit to issue a refusal has expired
(assuming no refusal or refusal withdrawn)
International Registration
Refusals
Article 5
Rules 16, 17 and 18
Are there any limitations on the
right to refuse?
•
•
Time Limit
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
Protocol CPs which have
opted for 18 months
Armenia, Australia, Belarus, Bulgaria, China, Cyprus,
Denmark, Estonia, European Community, Finland,
Georgia, Greece, Ireland, Iceland, Iran (I. R. of), Italy,
Japan, Kenya, Lithuania, Norway, Poland, Rep. of Korea,
Singapore, Slovakia, Sweden, Switzerland,
Turkmenistan, Turkey, Ukraine, United Kingdom, United
States, Uzbekistan.
- all others: 12 months
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))
Acceptable Grounds for
Refusal
Refusals can be based on…..
• a substantive inherent objection (unlawful mark,
non distinctive mark)
• a prior cited registration/application (opposition)
• an objection to the specification of the goods and
services
Notification of Provisional Refusal
3 stages (Rule 17)
The initial notification (provisional refusal)
- prescribed content (identity of the office, IR,
grounds, scope of the refusal, time limit for filing a
request for review of or appeal against the PR or for
filing a response to the opposition…)
- recording and transmission by IB
• Confirmation or Withdrawal [final
decision/Office]
• ? Further decision affecting protection
Statement of Grant of Protection
(Voluntary under Rule 17(6))
• If no notification of Refusal issued, a CP may send
SGP after:
- all procedures complete (protection granted)
or
- Ex officio exam complete + after expiry of
opposition period (protection granted)
WIPO will record the statement and transmit
it to the Holder
SGPs are issued by the following
Contracting Parties (April 2006)
Armenia
Australia
Benelux
Georgia
Hungary
Ireland
Japan
Norway
United Kingdom
Rep. Of Korea
Singapore
Sweden
Syrian Arab Rep.
Turkey
European Community
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
Managing the International
Registration I
Subsequent Designation
Change in Ownership
Limitation, Cancellation, Renunciation
Term of Protection and Renewal
Managing the International
Registration
Subsequent Designations
Art. 3ter(2)
(Rule 24)
Presentation
• Form MM4
• By the Holder
• By Office of the Contracting Party of the Holder
if designation under Agreement
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
• Subsequent designation resulting from
conversion (opting back)
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.
SUBSEQUENT DESIGNATION MADE BEFORE 10 YEARS
1/01/1996
1/01/2006
1/01/2016
________________________________________________________
PAYMENT VALID ONLY UNTIL 1/01/2006
SUBSEQUENT DESIGNATION MADE AFTER 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
Managing the International
Registration
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)
• directly to the IB
• by the recorded holder:
(the transferor)
Office of holder’s CP
• through an Office
Office of new owner’s CP
Office of holder’s CP
• by the new owner:
(the transferee)
• through an Office
Office of new owner’s CP
Managing the International
Registration
Limitation, Cancellation, Renunciation
Rules 25, 26 and 27
Limitation, Cancellation,
Renunciation
some designated
Contracting Parties
Limitation
some of the goods and services
all designated
Contracting Parties
some of the goods and services
Cancellation
all the goods and services
Renunciation
all the goods and services
all designated
Contracting Parties
some designated
Contracting Parties
EFFECTS
CONSEQUENCES
no protection for
the goods/services
subsequent designation is
possible
goods/services remain
kept in the International
Register
goods/services taken into
account for calculating
renewal fees
no protection for the
goods/services
no subsequent designation
in respect of those goods/services
goods/services are
removed from the
International Register
goods/services are not taken
into account for calculating
renewal fees
no protection in the
Contracting Party
subsequent designation
of the Contracting Party
is possible
LIMITATION
PARTIAL
CANCELLATION
RENUNCIATION
Term of Protection
Renewal
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 period
• Payment
– direct with the IB
– fees plus indication of purpose, or
– fees plus MM 11
• Fees 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 designations
• Exception
– renewal for some designated CP only
Managing the International
Registration II
Dependence;
Ceasing of Effect of Basic Mark;
Transformation;
Replacement (4bis);
Licenses
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 Effect
Agreement and Protocol
Article 6(3) and (4);
Rule 22
Definition
• “Ceasing of Effect” of Basic Mark can be due to:
– Withdrawal, lapse or renunciation or final decision
of rejection, revocation, cancellation or invalidation
– An act or failure to act by owner of basic mark or
an 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 IR
affects all designated Contracting Parties
Procedure
If a basic mark “ceases to have effect” in whole
or in part within 5 years of date of IR, Office
of Origin notifies IB, pursuant to Rule 22, and
requests partial or total cancellation of IR.
Basic Mark
5-Year Dependency
International
Registration
(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.
Always Dependent
Effect of IR as a
national/regional
registration
No particular action required; some designated
Contracting Parties may update their databases.
Transformation
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.
• REQUIREMENTS:
– TIME: The application has to be filed within 3 months from
the date on which the IR was cancelled in the International
Register.
– FORMAL REQUIREMENTS
• Same mark
• The goods and services of the application are covered by
the goods and services contained in the IR in respect of
the Contracting Party concerned
• Such 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
1. With respect to a Contracting Party in the territory
of which the IR has been subject of a total refusal,
invalidation or renunciation
1. In a Contracting Party whose designation is not
governed by the Protocol or in a Contracting State
where the IR did not have effect
Transformation – example (1)
• France (AP) – basic registration
• Designations
US
Egypt
Germany
UK
Transformation – example (2)
Where is transformation possible?
Country
Treaty
Transform?
UK
(P)
P
Y
US
(P)
P
Y
Egypt
(A)
A
N
Germany
(AP)
A
N
Replacement
of a
National or Regional Registration
(NNR)
Agreement and Protocol Article 4bis
Rule 21
Why Replacement?
• Preexisting national or regional registrations
(NNR) for same mark in a potential designated
Contracting Party (DCP).
• Incorporate such preexisting NRRs into a single
international registration (IR)
– Take advantage of the centralized maintenance and
management features of the Madrid System
Article 4bis(1) Conditions
•
•
•
•
•
Same Mark
Same Holder
G&S in NRR covered in IR
Extension of protection must be requested
Extension of protection must take effect after
date of NNR
Effect / Rights
• Automatic effect, i.e., when conditions
for replacement are satisfied.
• Article 4bis(1): “…without prejudice to any
[national/regional] rights acquired....”
– Filing and Registration Dates
– Priority claim
– etc.
Coexistence
• IB Interpretation
– NRR and IR MAY be maintained independently, but
holder MUST satisfy legal requirements of each.
• Why Coexistence?
– Possibility of provisional refusal
– 5-Year dependency of IR
– Remaining term of protection for NRR
Article 4(bis)(2) Requests
• IF holder so requests, the Office with which the
NRR is registered MUST “take note” of IR in
its register.
• NRR Office MAY (i.e., not prohibited):
– charge fee
– require local practitioner to file request
Rule 21 Notifications
• IF the Office with which NRR is registered “takes
note,” it MUST notify the IB.
• Contents of notification
– IR: international registration number
– NRR: filing date and (application) number /
registration date and number / priority date / if only
some g&s, then those g&s
• IB records and publishes; informs holder.
Role of IB
• Article 4bis request presented directly to DCP in
which the NRR is registered--not to IB.
• Apart from recording and publishing notification
received from DCP Offices, IB has no particular
role in implementation or administration of
Article 4bis.
Recording of Licenses
Rules 20 and 20bis
Presentation of the Request
• Holder
• Office of the Contracting Party of Holder
• Office of the Contracting Party in respect of
which license is granted
Formalities
• Form MM13
• Signature
– Holder
– Presenting Office
Contents of Form (MM13)
Compulsory:
•
•
•
•
•
International registration number
Holder’s name
Licensee’s name and address
Contracting Parties designated in license
Goods/services covered by license
Contents of Form
Optional:
•
•
•
•
•
•
Nationality (natural person)
Legal nature (legal entity)
Territorial restriction
Licensee’s representative
Exclusive or sole
Duration
Declaration - Rule 20bis(5)
No Effect of Recording of Particular License
• Matter for individual CP
• 18 months from notification
• Requirements:
–
–
–
–
Reasons
Goods/Services affected, if not all
Relevant legal provisions
Whether subject to review/appeal
Declaration - Rule 20bis(6)(a)(b)
Recording of Licenses without Effect in
Contracting Party
(a) Contracting Party not providing for recording
of licenses
Australia, Germany
(b) Contracting Party providing for recording, but
not for recordings in IR
China, Georgia, Greece, Japan, Kyrgyzstan, Lithuania,
R. of Korea, R. of Moldova, Russian F., Singapore
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Thank You
André Ntamack
Program Officer
International Registration Operations Division
[email protected]