Transcript Slide 1

National Seminar on the
Madrid Protocol for the
International Registration
of Marks
André Ntamack
Head, Examination and Registration Section
Jerusalem
July 13 - 14
2010
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
Filing conditions: entitlement to file and basic
mark
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)
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
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 the
International 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
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
The Filing and Registration Procedure
Basic registration
Basic application
International
Application
Office of Origin
International
Bureau
Offices of the
Designated
Contracting Parties
Role of the Office of Origin
International
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
International Bureau
Tasks
Formality examination
Inscription in the International
Register
International
Bureau
Publication in the Gazette
Issuance of a Certificate for
the holder and Notification to
the designated Contracting
Parties
Designated Contracting Party
Tasks
Office of the
Designated
Contracting Party
Substantive examination
opposition
12/18+ months
Provisional
refusal
No provisional
refusal/withdrawn
= national registration
Types of International Applications
One System
Two Treaties (Madrid Agreement and Protocol)
Two possible designations
Three 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
MM2
Why is this type of international application
governed exclusively by the Protocol?
P
P
Israel
P
USA
P
or
P
AP
China
MM2
Why is this type of international application
governed exclusively by the Protocol?
P
AP
China
P
Israel
P
or
P
P
UK
MM2 - Requirements
International Application
Office of Origin
Filing basis:
Form:
Language:
Free choice of the Office of origin
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
P
P
UK
P
P
P
AP
Israel
Switzerland
P
Example
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
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 (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
Mark in color
653 CHF
903 CHF
Designation fee
OR individual fee
100 CHF/country
xxx CHF/per CP
Fees for goods & services
beyond three
or individual fee
100 CH/class
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 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
(as filed but with
notation)
3 months
to resolve
No reply from
OO
REGISTERED
(as filed but with notation)
Rule 11: other irregularities
Corrected
REGISTERED
OO Reply
IB Proposal
Not corrected
3 months
to resolve
No Reply
*
Refund: fees paid minus 1/2 basic fee for b&w
registration.
ABANDONED*
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(*)
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
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
Notification to the offices
of the designated countries
SGP
Interim Status of the mark
(no grounds for
ex officio refusal)
Rule 18ter(1)
Provisional Refusal
Rule 17(1)
Rule 18bis(1)(a)
Statement of Grant of Protection
SGP
When all the procedures before
the office are over
The mark is protected
Rule 18ter(1)
Mandatory - Rule 40(5)
(01/01/2011)
EX OFFICIO EXAMINATION COMPLETED
No grounds for refusal by the office
INTERIM
STATUS OF THE
MARK
(OPTIONAL)
BUT
oppositions/observations still possible
Rule 18bis(1)(a)
Notification of a provisional
refusal based on opposition
Rule 17(1)
SGP
When opposition period
has expired without any
oppositions/observations
Rule 18ter(1)
Notification of provisional refusal
Rule 17(1)
WHEN ALL PROCEDURES BEFORE OFFICE COMPLETED
FINAL
DISPOSITION
ON THE STATUS
OF THE MARK
(MANDATORY)
SGP
For ALL the goods and
services
SGP
for SOME goods and
services
Confirmation of total
provisional refusal
Rule 18ter(2)(i)
Rule 18ter(2)(ii)
Rule 18ter(3)
Further decision affecting the protection of the
mark
Rule 18ter(4)
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
Invalidation
Article 5(6) & Rule 19
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 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
Basic Mark
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.
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.
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
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 International
Registration
Subsequent Designations
Art. 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
SUBSEQUENT DESIGNATION MADE BEFORE 10
YEARS
1/01/2006
1/01/1996
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
Renunciation
all designated
all the goods and services
Contracting Parties
all the goods and services
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
Thank you!
[email protected]